PCT Newsletter 06/2008: 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.

Signature requirements for withdrawals of designations

Q: When I, as agent, filed an international application two months ago, claiming the priority of a national application filed in Japan (JP), I forgot to check the box under Box No. V “Designations” to the effect that JP is not designated for any kind of national protection, which I should have done in order to avoid the ceasing of the effect, under the national law, of the earlier application. I must therefore withdraw the designation of JP within 15 months from the earlier filing date, which leaves me very little time to do this. Bearing in mind that the only applicant for the purposes of the designation of JP is the corporate applicant, I presume that, for the purposes of the signature of the notice of withdrawal, it is not also necessary to obtain the signatures of the applicant/inventors who are only applicants for the designation of the United States of America (US)? Is my presumption correct, according to the PCT? (Note that the request form was not signed by the applicants and, in view of the fact that the receiving Office has made a waiver of the requirement to furnish a power of attorney, a power of attorney has not been furnished.)

A: According to PCT Rule 90bis.5(a), any notice of withdrawal, including the withdrawal of a designation, must be signed by the applicant or, if there are two or more applicants, by all of them. The notice of withdrawal of the JP designation would therefore require the signature of all applicants, regardless of the fact that the applicant/inventors are only applicants for the US designation, and are not also applicants for the JP designation. Even if the corporate applicant is considered to be the common representative under PCT Rule 90.2(b) (the “deemed common representative”), it cannot sign a notice of withdrawal on behalf of the other applicants.

Note that even though a waiver has been made by the Japan Patent Office in its capacity as receiving Office, a waiver never applies in respect of any notice of withdrawal under PCT Rules 90bis.1 to 90bis.4 (see PCT Rule 90.4(e)); if a notice of withdrawal is not signed by all applicants, a power of attorney is required, signed by all applicants.

The only exception to the requirement that the applicant/inventors must sign the notice of withdrawal of the designation mentioned above is as follows: according to PCT Rule 90bis.5(b), where the applicant/inventors concerned had designated a State whose national law requires that national applications be filed by the inventor (namely, the US), and where the applicant for that designated State who is an inventor could not be found or reached after diligent effort, the notice of withdrawal under PCT Rule 90bis.2 need not be signed by that applicant if it is signed by at least one applicant, and

a statement is furnished explaining, to the satisfaction of the receiving Office or the International Bureau, as the case may be, the lack of signature of the applicant concerned; or
if the request was signed by at least one applicant and a statement was furnished explaining, to the satisfaction of the receiving Office, the lack of signature of the request.

Even though the requirement to submit a power of attorney may have been waived by the receiving Office, and even though it is acceptable for only one of several applicants to sign the request to satisfy the signature requirement (see PCT Rules 4.15(a) and 26.2bis(a)), agents or common representatives should carefully consider whether they should in any case obtain the signatures of all applicants, either by way of signing a power of attorney or by way of signing the request. By obtaining those signatures in advance, any withdrawal, which requires the signatures of all of the applicants or a power of attorney signed by all of the applicants, could be dealt with by the relevant office/authority immediately, and delays caused by waiting for signatures would not be incurred. Even if those signatures are not actually submitted by the agent/common representative, but are merely kept in the file of the agent/common representative, at least they would be available if they were needed later.

For further information on withdrawals in general, see the PCT Applicant’s Guide, paragraphs 452 to 463 at:

www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

and for further information on the withdrawal of designations, see the “Practical advice” in PCT Newsletter No. 2/2004: