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PCT Newsletter 07-08/2010: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.


Recording of an e-mail address for PCT notifications issued by the International Bureau

Q:  In an effort to move away from paper files, the company of patent attorneys that I work for, which is acting as agent for over 100 international applications, would like to request that notifications issued by the International Bureau be sent by e-mail instead of by mail.  I have seen that this can be done by marking the appropriate check-box in the request form, but would like to know how I can request this change in respect of international applications where that form has already been filed and the e-mail address has not yet been furnished.  Can I make a single request for the recording of the e-mail address that will cover all international applications where we act as agent?

A:  Such a request may be dealt with in the same way as any other requests under PCT Rule 92bis “Recording of Changes in Certain Indications in the Request or the Demand”, for example requests to record a change in the person, name, residence, nationality or address of the applicant or requests to record a change in the person, name or address of the agent, the common representative or the inventor.  In other words, the request should be made in a letter signed by the applicant or the agent of record.  This would also be the case if you wished to change an e-mail address which had been given earlier.

In order to facilitate the sending and processing of requests for the recording of changes in respect of multiple applications, the International Bureau (IB) encourages the sending of a single letter in which all the international application numbers concerned are listed, rather than the sending of a separate letter for each application.  It is important, however, to list the numbers concerned, and not to simply request that the change be made “in respect of all international applications filed by the applicant/agent”.  Note also that only agents who have been authorized to sign on behalf of the applicant may send such a request, therefore, separate letters may need to be sent by other agents in your firm if you are not authorized to sign on behalf of the applicants in respect of the international applications that are being handled by the other agents.  Of course, if the company itself (rather than an individual) has been authorized to sign for the applicants, anyone authorized to sign for the company may sign for all international applications concerned.

In order to ensure that the change is recorded promptly, and in view of the fact that not all receiving Offices may be prepared to accept a request for recording of a change in respect of multiple applications in a single letter, it is generally recommended that any request for the recording of a change be sent direct to the IB, rather than to the receiving Office.  Such requests may be sent to the IB by mail, by fax (to the general PCT fax number:  (+41‑22) 338 82 70), or, preferably, using the PCT Online Document Upload Service.  The latter, which permits PCT applicants or their agents to submit electronic documents (in PDF format) to the IB via a web interface, is particularly recommended as it allows post-filing documents to be submitted quickly and efficiently to the IB (for further information, see PCT Newsletter No. 01/2010, page 2, and the user guidelines for the PCT Online Document Upload Service at:  https://www.wipo.int/patentscope/en/service_center/).  Note that any request for change which is received after the expiration of 30 months from the priority date in respect of a particular application will not be recorded in respect of that application (PCT Rule 92bis.1(b)). 

It is important to specify in your letter whether you wish e-mails to be sent as “advance copies followed by paper notifications”, or whether you wish them to be sent “exclusively in electronic form”, in which case no paper notifications would be sent.  If you have not already been receiving notifications by e-mail from the IB, it is recommended, as a first step, to begin by requesting advance copies followed by paper copies.  The second option of requesting notifications exclusively in electronic form should be used only when you have successfully received advance copies of notifications by e‑mail from the IB and are satisfied with the electronic delivery to your e‑mail address, as confirmed by the subsequent receipt of the paper copy.

It is recalled that, although the IB is prepared to send notifications to the applicant by e-mail, it is not possible for applicants to reply to such e-mails received from the IB (they are sent from the e-mail address:  “no.reply@wipo.int”), and the IB is not prepared to accept documents sent by applicants by e-mail.  It will, however, receive documents sent electronically by document upload, and it will reply to general enquiries (that is, not relating to specific international applications) received by e-mail.

For further information on the new check-box in the request form relating to the sending of notifications by e-mail, see PCT Newsletter Nos. 01 and 04/2010, and for further information on the requesting of recording of changes, see the PCT Applicant’s Guide, International Phase, paragraphs 11.018 to 11.022.