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 maintaining the standardized wording of declarations under PCT Rule 4.17
Q: I will be submitting a declaration under PCT Rule 4.17(iii) (that is, the declaration as to the applicant’s entitlement to claim the priority of the earlier application) together with my international application, but am unsure what to do because the wording of the declaration as provided in the standardized wording given in the request form would need to be modified to clarify the circumstances of the international application concerned. Is it possible to modify the text accordingly?
A: All declarations under PCT Rule 4.17 must conform to the standardized wording provided for in Sections 211 to 215 of the Administrative Instructions under the PCT (and also included in Box No. VIII or the Notes to Box No. VIII or generated by the PCT-SAFE software). Except in the case of the declaration of inventorship for the purposes of the designation of the United States of America, which is a pre-printed standardized text, the applicant must choose those items and elements from the standardized wording that apply and place them in the appropriate order, taking into account the facts of the case, the chronology of events, etc. For example, regarding the text of the declaration under PCT Rule 4.17(iii), you can include, omit, repeat, or re-order the matters listed in items (i) to (viii), as is necessary, to explain the applicant’s entitlement to claim priority of the earlier application. You cannot introduce any new text, however, other than what is listed in those items.
According to PCT Rule 26ter.2(a), where the receiving Office or the International Bureau (IB) finds that any declaration is not worded as required, it may invite the applicant to correct the declaration within a time limit of 16 months from the priority date. If the declaration is not subsequently corrected so as to conform to the standardized wording, it will not lead to any loss of rights and the IB will, nevertheless, publish the declaration. It will then be up to each designated Office concerned to determine whether it can accept the declaration or not, and the designated Office(s) would be entitled to require you to furnish a new declaration or further evidence in the national phase.
It is recalled that the filing of declarations under PCT Rule 4.17 is an optional procedure during the international phase. By filing such declarations, the applicant makes use of a simpler, centralized procedure for providing information required on entry into the national phase only once, in the international phase, which may be more advantageous than filing different national-type declarations with the designated (or elected) Offices in the national phase, or, if applicable, furnishing documentary evidence to those Offices (for example, assignment documents).
In conclusion, if the circumstances of your application are such that the standardized wording of a particular declaration cannot be used, it may be preferable for you to comply with the applicable national law requirements before each designated Office in the national phase.
For further information on furnishing declarations, see the PCT Applicant’s Guide, paragraphs 5.074 to 5.083, and to find out what are the requirements under PCT Rule 51bis of the various designated States, refer to the relevant Summaries in the National Chapters of that publication at:
https://www.wipo.int/pct/en/guide/index.html
Before preparing a declaration, it is also strongly recommended to read the notes to Box No. VIII of the request form at:
https://www.wipo.int/pct/en/forms/request/ed_request.pdf