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Indication of "State of residence" and "State of nationality" in the Request Form in the case of "dependent territories" or other territories
Q: I intend to file an international application on behalf of a corporate applicant which is a "resident" and "national" of the United States of America. However, the applicant/inventor for the purposes of the designation of the US is from a territory which is not a PCT Contracting State, and which is not recognized as a State by the United Nations. Will this affect the applicants' right to file the international application? If not, how should I indicate the applicant/inventor's "State of residence" and "State of nationality" in Box No. III of the Request Form?
A: According to PCT Rule 18.3, if there are two or more applicants, the right to file an international application exists if at least one of them has the right to file an international application under PCT Article 9; that is, if at least one of them is a resident or national of a PCT Contracting State. The nationality and residence of the other applicant(s) are then not taken into consideration. Furthermore, different applicants may be indicated for different designations (see PCT Rule 4.5(d)). In other words, the PCT does not require that there be at least one applicant entitled to file under PCT Article 9 for each and every designation.
If, in your case, there were no other applicants who had the right to file an international application other than the applicant/inventor, the application would not be accorded an international filing date (see PCT Article 11(1)(i)) unless the territory concerned is a dependent territory of a PCT Contracting State to which the PCT has been extended, in which case the applicant/inventor would have the right to file an international application. PCT Rule 4.5(b) and (c) requires the indication of the State of which the applicant is a national and the State of which the applicant is a resident. In the case of such dependent territories, it is the name of the State on which the territory depends which must be indicated under "State of residence" and/or "State of nationality," whichever is applicable, since this is the decisive element for a determination under PCT Article 9(1). For example, an applicant who is a resident or national of the Isle of Man, a British dependent territory to which the United Kingdom has specifically extended the PCT (see PCT Applicant's Guide, Vol. I/A, Annex A, footnote 5 (available in Adobe PDF format)), should indicate his State of nationality and/or residence, as the case may be, as being "United Kingdom" or "GB," and not as "Isle of Man," which is not a ?State.?
As far as the receiving Office is concerned, where, in lieu of the State of nationality or State of residence, the name of a dependent territory or other entity which is not regarded as a "State" is indicated, the receiving Office may, wherever possible and appropriate, invite the applicant to correct the request so as to comply with the requirements of Rule 4.5(b) and (c). In certain cases, subject to the national law of the State concerned and the practice applicable by the receiving Office, it may make an ex officio correction (see PCT Receiving Office Guidelines, para. 87).
As far as the International Bureau is concerned, if the indication of a State of nationality and/or State of residence has not yet been provided by the applicant, the practice of the International Bureau, for the purposes of international publication of the application, is to include a dash in the place where the nationality/residence would normally appear in the pamphlet and in Section I of the PCT Gazette, as follows: [–/–]; this is because indications of State of nationality and State of residence are only published where they relate to States regarded as such under the practice of the United Nations (see PCT Receiving Office Guidelines, para. 87). If the name of the territory is included in the address of the applicant, that name will be published as part of the applicant's address.
Overall, the question whether an applicant is a resident or national of the Contracting State of which he claims to be a resident or national depends on the national law of that State and is decided by the receiving Office, or in the case where the International Bureau acts as receiving Office, by the national Office concerned (see PCT Rule 18.1(a) and (c)).
Note that the residence and nationality requirements for filing a demand for international preliminary examination are similar to the residence and nationality requirements for filing the international application–the demand (Form PCT/IPEA/401) must include an applicant whose State of residence and/or State of nationality is a Contracting State of the PCT bound by Chapter II (see PCT Article 31(2)(a)) and Rules 54.1 and 54.2).