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.

Filing an international application where the applicant for the earlier application is not the same as the applicant for the international application.

Q: I am going to file an international application on behalf of a corporate applicant (Company B). The earlier application, the priority of which is going to be claimed in the international application, was filed by a different company (Company A), and later assigned to Company B. Should I take any action to explain why the applicant in the earlier application is not the same as the applicant in the international application?

A: Upon entry into the national (or regional) phase, many designated (or elected) Offices require proof of the applicant's entitlement to claim priority of an earlier application, where the applicant of the international application is not the same applicant as for the earlier application, or where the applicant's name has changed since the date on which the earlier application was filed. Such a requirement is permitted in accordance with PCT Rule 51bis.1(a)(iii). You can find out which Offices require such proof by consulting the Summary pages of the corresponding National Chapters of the PCT Applicant's Guide. The PCT Applicant's Guide also contains information on any other requirements listed under PCT Rule 51bis.1(a), for example, the United States Patent and Trademark Office as designated (or elected) Office requires an oath or declaration of the inventor, as permitted under PCT Rule 51bis.1(a)(iv).

Although you are entitled to submit such proof of entitlement or other required documents upon entry into the national phase, the PCT provides for submission of a declaration (one for each requirement) already during the international phase which would be valid for all designated Offices, and in particular for those requiring proof under PCT Rule 51bis.1(a)(iii), thus simplifying the procedure for you in the national phase.

In the case that you mention above, where the applicant named in the international application is not the same as the applicant named in the earlier application, you can submit, in accordance with PCT Rule 4.17(iii), a "Declaration as to the applicant's entitlement, as at the international filing date, to claim priority of the earlier application, as referred to in PCT Rule 51bis.1(a)(iii)", provided that the assignment from Company A to Company B took place before the filing of the international application.

The declaration under PCT Rule 4.17(iii) (as well as the other declarations under PCT Rule 4.17) is contained in the request form, and complies with the standardized wording as provided for in Section 213 of the Administrative Instructions under the PCT (/pct/en/texts/ai/s213.html). The declaration can be submitted at the time of filing the international application, or after filing, provided that it is received before the expiration of the time limit under PCT Rule 26ter.1, that is, 16 months from the priority date. However, note that any declaration received by the International Bureau (IB) after the expiration of that time limit will be considered to have been received on the last day of the time limit if it reaches the IB before the technical preparations for international publication have been completed.

Declarations that are submitted at the time of filing are sent to the receiving Office and form part of the request form. However, in the case of later-filed declarations, which should be accompanied by a letter explaining the addition of the declaration, it is recommended to send them to the IB, especially if the time limit under PCT Rule 26ter.1 is going to expire soon. All declarations that are received by the IB before completion of technical preparations for publication will be published on PATENTSCOPE. Please note that if you submit any declarations under PCT Rule 4.17 after the expiration of the time limit under PCT Rule 26ter.1, you will be notified that the time limit has expired and that you need to submit the declarations to each designated Office concerned.

Wherever possible, you should prepare and submit declarations using ePCT. If your receiving Office accepts international applications filed using ePCT, you can do this when filing the international application using ePCT. If your receiving Office does not accept international applications filed using ePCT, you can file the application in your usual way and then use the corresponding ePCT "Action" for preparing and submitting the declarations to the IB, provided that you have established eOwner or eEditor access rights to the international application in ePCT. By using ePCT, the standardized wording of the declaration concerned is automatically generated in the correct language, and any relevant bibliographic data available in ePCT will be automatically included in the declaration without any need for retyping. Although less practical than using the integrated ePCT Action, if you do not have access rights to the international application in ePCT, declarations can also be prepared outside the system and uploaded in PDF format to the IB using the document upload function in ePCT, which does not require access rights. For further information on using the ePCT Action for declarations, and, in particular, the electronic signing of declarations of inventorship using the external signature function in ePCT, please refer to the Practical Advice in PCT Newsletter No. 10/2019 at:

https://www.wipo.int/edocs/pctndocs/en/2019/pct_news_2019_10.pdf

Instructions on the use of the ePCT Action are also available at:

/en/web/epct/learnmore?N=843

For further assistance, please contact our customer helpdesk at: pct.eservices@wipo.int

Please note that, in view of the fact that any declarations submitted at the time of filing form part of the request form (PCT/RO/101), the declaration(s) would be included in the page count of the international application. This means that, if your application already contains at least 30 sheets, you would have to pay an additional fee for each page added. However, if you submit any declarations after filing the international application, you would not be required to pay any additional fees.

Provided that your declaration has been submitted within the applicable time limit, you should be required by a designated Office to submit further documents or evidence in relation to the entitlement to claim priority of the earlier application only if that Office reasonably doubts the veracity of the declaration (PCT Rule 51bis.2(iii)). For further information on the requirement of designated Offices to accept declarations under PCT Rule 4.17, please refer to the Practical Advice in PCT Newsletter No. 02/2014 at:

https://www.wipo.int/edocs/pctndocs/en/2014/pct_news_2014_2.pdf

If the circumstances of a particular case are such that the standardized wording is not applicable, you should not attempt to make use of the declarations provided for in PCT Rule 4.17, but rather comply with the relevant national requirements upon entry into the national phase.

Please note that the declarations under PCT Rule 4.17(ii) to (iv) relate only to the situation on the international filing date, and cannot be used to notify changes concerning the inventor or applicant which occur after that date − the procedures under PCT Rule 92bis should be used in such cases.

Please also keep in mind that some designated or elected Offices, such as the European Patent Office, may require that the substantive transfer of the priority right from the applicant of the earlier application to the applicant of the international application has taken place before the filing date of the international application (see National Chapters of the PCT Applicant's Guide).

You may find it useful to view the recording of a webinar about submitting PCT declarations that took place on 24 June 2021. It is available, together with the accompanying PDF presentation, at:

/pct/en/seminar/webinars/index.html