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.
Situation where the sole applicant, who is not a national of a PCT Contracting State, is no longer resident in a PCT Contracting State
Q: I am the agent for a sole applicant who is not a national of a PCT Contracting State. He was, at the time of filing the international application, and still is, a resident of the country where I practice, which is a PCT Contracting State, and the international application was filed with the national receiving Office of that country. However, the applicant is now planning to move back to the State of which he is a national. Will there be any consequences if the applicant becomesa resident of a country which is not a PCT Contracting State?
A: According to PCT Article 9, the applicant (or if there are two or more applicants (PCT Rule 18.3)), at least one of the applicants must be a resident or national of a PCT Contracting State, and the applicant’s country of residence and nationality must be indicated in the international application upon filing (PCT Rule 4.5(a)(iii)).
However, the requirement under PCT Article 9 needs only to be complied with at the time of filing the international application. Later changes in the applicant’s country of residence (or nationality), as for example in your case, above, where an applicant who is not a national of a PCT Contracting State is going to move from a PCT Contracting State to a non-PCT Contracting State, have no consequence on the validity of the international application itself. Similarly, if a PCT application is assigned to another person, it is not necessary, in order for a change in the person of the applicant to be recorded, that the new applicant be a resident or national of a PCT Contracting State – the PCT does not contain any restriction as to whom an international application may be assigned to.
However, please note that if the applicant intends to file a demand for international preliminary examination under Chapter II, PCT Article 31(2)(a) requires that the demand be filed by at least one applicant who is a resident or national of a PCT Contracting State bound by Chapter II; therefore, the demand would need to be filed before the applicant moves, and before the change in the residence of the applicant is requested to be recorded under PCT Rule 92bis, so that his country of residence at the time of filing the demand would fulfill the necessary criteria. Any change in the country of residence after the filing of the demand would have no consequence on the validity of the demand.
Rest assured that, provided that you have the right to practice before the receiving Office with which the international application was filed, you will continue to have the right to represent the applicant before the receiving Office and the International Authorities throughout the international phase, even though the applicant will no longer be resident in the same country as you.
It is recalled that any change in the status of the applicant (such as address or country of residence or nationality) will be recorded by the International Bureau upon receipt of a request to record a change under PCT Rule 92bis. Although the bibliographic data of the published international application will indicate the applicant’s new country of residence as well as his new address (presuming that the request for recording the change is received before the technical preparations for publication have been completed), third parties will be able to view, in PATENTSCOPE, the request form as originally filed, in which the original country of residence and original address will be indicated.
For further information on the submission of requests for recording changes under PCT Rule 92bis, see the “Practical Advice” in PCT Newsletter No. 01/2016, and PCT Applicant’s Guide, paragraphs 11.018 to 11.022.