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.
The importance of the order in which applicants are named in the request form where no common agent has been appointed
Q: I am a national and resident of China, and I am applicant, together with another national and resident of China, for an international application which was filed on our behalf by our agent with the State Intellectual Property Office of the People’s Republic of China as receiving Office (RO/CN). The agent, however, has just renounced his appointment, and so there is no longer an agent of record for the application. As I am inexperienced in filing PCT applications, I would like to appoint a new agent. My co-applicant, however, does not agree with my choice of agent, and would like to appoint somebody else. Is it possible to have two separate agents, and if so, which agent would be entitled to take action on the international application?
A: Although it is generally more convenient and reduces costs if applicants appoint the same agent1 to represent them as their “common agent”, it is possible for you to appoint a different agent for the international application than the one which is appointed by your co-applicant. Note, however, that only one agent can be considered as the “agent of record” who would be entitled to take action on the application. The agent who would be considered to be the main agent will be determined by which applicant, you or your co-applicant, is the “deemed common representative”:
If neither of you has been appointed by the other as a common representative for the international application, PCT Rule 90.2(b) provides that the applicant first named in the request form who is entitled, according to PCT Rule 19.1, to file an international application with the receiving Office with which the international application was filed, will be considered to be the common representative (the “deemed” common representative). Since you are both entitled to file with RO/CN, the deemed common representative will be whichever one of you is named first in the request form. If you were named first, then you are the deemed common representative, and any agent who you appoint will be considered to be the agent of record, whereas the agent appointed by your co-applicant would be entitled to act only on behalf of the co-applicant; and if your co-applicant was named first, he or she is the deemed common representative. Whichever is the case, it is highly recommended that you and your co-applicant appoint an agent (or agents) for the international application as soon as possible, as it is very important that the person prosecuting the application has a full understanding of the PCT procedure.
Sometimes, applicants are not aware of the importance of the order in which applicants are listed in the request form. If the wrong applicant is named first, and it was not intended that that applicant be considered as the deemed common representative for the application, this can be changed by requesting the recording of a change under PCT Rule 92bis. However, due to the nature of such a request, this would need the approval of the current first-named applicant, for example, by signing that request.
Presuming that you are the first-named applicant in the request form, and are therefore the deemed common representative (given that you are entitled to file an international application with RO/CN), please be aware that neither you nor your appointed agent are entitled to effect any withdrawals under PCT Rule 90bis unless the notice of withdrawal is signed also by your co-applicant or the co-applicant’s appointed agent (PCT Rule 90bis.5). You or your agent would, however, be entitled to take other actions, such as the submission of amendments under PCT Article 19, filing a demand for international preliminary examination, and, in most cases, requesting the recording of a change under PCT Rule 92bis (see exception mentioned in the paragraph above) without the need for the signature of the other applicant.