PCT Newsletter 10/2020: 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.

Access by third parties to the inventor’s address that was included in the request form upon filing, but is subsequently changed following a request under PCT Rule 92bis

Q:  I filed an international application in which the inventor’s home address was indicated in Box No. III of the request form.  The inventor (who is not also an applicant) later asked me to request that his home address be changed to his professional address, where he can also be reached.  If I request the International Bureau to record such a change under PCT Rule 92bis, will the home address be visible to third parties upon publication of the international application?

A:  Concerning the inventor’s address in general, if the name and address of the inventor (or inventors) are furnished prior to the completion of technical preparations for publication, the name of the inventor will be made publicly available on PATENTSCOPE on the “PCT Biblio. Data” tab of the international application concerned (please refer to PCT Rule 48.2(b)(i)) at the time of publication of the international application, however the address of the inventor will not be published in the bibliographic data.  It used to be the case that the address of the inventor was also made publicly available on the bibliographic data tab but, since January 2009, in response to privacy concerns, the address data of the inventor is no longer displayed on that tab, with the effect that personal address data is no longer indexed or displayed by Internet search engines. 

The inventor’s address is nevertheless visible to third parties, in image format only, on the front page of the published international application, as well as in certain other documents that contain the inventor’s address.  In addition to the request form (PCT/RO/101), which is available under the “Related Documents on file at the International Bureau” tab, other examples are declarations as to the identity of the inventor under PCT Rule 4.17(i) and declarations of inventorship under PCT Rule 4.17(iv)).  Both of these declarations are included as separate items under the “Published International Application” tab of PATENTSCOPE. 

In your case, if the request to record the change of address of the inventor under PCT Rule 92bis is received by the International Bureau (IB) before the completion of technical preparations for publication, the inventor’s professional address will be indicated on the front page of the published international application, and not the home address.  

However, Form PCT/IB/306 (Notification of the Recording of a Change) confirming the change of address of the inventor (which will include the inventor’s address as indicated in the request form upon filing as well as the new address) will be visible to third parties on PATENTSCOPE under the “Related Documents on file at the International Bureau” tab but in image format only, and not in electronic searchable form.  Similarly, if you have submitted a declaration of inventorship under PCT Rule 4.17(iv) (which requires the inventor’s address) and the inventor’s home address was indicated on those forms, that address will, in accordance with PCT Rule 48.2(a)(x), also be visible to third parties on PATENTSCOPE in non‑searchable image format. 

It is not a simple matter to fully remove the inventor’s home address from an international application once it has been included in the application.  Although the applicant may request the omission of certain sensitive information from public file access under PCT Rule 94.1(e), this is only granted if the request is well‑founded.  Since a high standard must be met when justifying such omission1, it is likely to be successful only in very rare and exceptional cases.  (For further information about such requests, please refer to PCT Newsletter No. 07-08/2016.)

It is therefore important to consider, before filing the international application, whether there is any sensitive information that should not be included in the international application without resulting in any defects or problems.  Even though it is not a requirement under the PCT to furnish the name and address of the inventor in order to be accorded an international filing date, it is nevertheless strongly recommended that this information be included in the request form as most PCT Contracting States, in their capacity as designated (or elected) States, require this information.  This avoids any problems or delays in the national phase.  You should be aware that, although it is normally possible to indicate the inventor’s professional address in the international application, once the application enters the national phase it is the national law of the designated Offices concerned that determines whether such an address is acceptable instead of the home address.  For further information on the requirement to include the name and address of the inventor, please refer to the Practical Advice in PCT Newsletter No. 12/2012.  Also, Annex B of the PCT Applicant’s Guide (www.wipo.int/pct/en/guide/index.html) includes information on the requirements of each Contracting State or intergovernmental organization if designated (or elected) regarding the time when the name and address of the inventor must be given. 

  1. According to PCT Rule 94.1(e), the IB must find that:  the information does not obviously serve the purpose of informing the public about the international application, public access to such information would clearly prejudice the personal or economic interests of any person, and there is no prevailing public interest to have access to that information.