PCT Newsletter 10/2019: 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.

Submitting declarations under PCT Rule 4.17 using ePCT, and obtaining the signatures of the inventors for the declaration of inventorship

Q: Five inventors are going to be included in an international application that I am going to file shortly and, to simplify the national phase procedure in the United States of America, I would like to submit a declaration of inventorship in respect of all the inventors during the international phase. Now that the competent PCT receiving Office accepts ePCT‑Filings, I would like to file the international application using ePCT‑Filing, and have seen that there is an ePCT “Action” for submitting declarations. If I use this Action, how do I submit the inventors’ signatures?

A: As you mentioned, ePCT contains an Action entitled “Declarations under Rule 4.17” which allows you to prepare any of the declarations under PCT Rule 4.17, and submit them to the International Bureau (IB) after filing (provided that you have either eOwner or eEditor access rights to the international application). Alternatively, when you use ePCT‑Filing, it is also possible to prepare and submit the declarations with the international application at the time of filing, bearing in mind however that the sheets containing declarations are included in the Request Form (RO/101) and therefore might result in additional page fees if your application already contains at least 30 sheets.

Aside from the page fee consideration, the process to prepare and submit declarations using ePCT is equally as efficient, regardless of whether you do this at the time of filing or after filing. This is because the standardized wording for the declarations is always generated automatically in the correct language (meaning that you should not receive any invitation to correct for reasons of incorrect wording of the declaration itself), and any relevant bibliographic data available in ePCT (such as, in the case of the declaration of inventorship, the names and addresses of the inventors) will be automatically included in the declaration without any need for retyping (which could result in typographical errors).

Although at the time of filing it is possible to choose to attach declarations that were already prepared outside of the system and attach them in PDF format, it is strongly recommended to use ePCT to actually prepare the declarations so as to benefit from the automation mentioned above, as well as the validations that are available.

As far as the signature of the declaration of inventorship under PCT Rule 4.17(iv) is concerned (this is the only declaration under PCT Rule 4.17 that requires a signature and ePCT validates that it is signed before submission), it is possible to obtain the signatures of the inventors by using the “external signature” function in ePCT. This feature allows an inventor to review and sign the draft declaration held in ePCT in electronic form without requiring access to the system – only an e‑mail address is required. You simply select the name of each inventor from the dropdown list of inventors’ names and select “external signature” in order to send a signature request by e‑mail to the e‑mail address indicated for that inventor in the bibliographic data (note that, if required, you can add an e‑mail address if not already present in the system, or you can edit the existing e‑mail address so that the external signature request is sent to a different e‑mail address, for example the inventor’s personal e‑mail address).

The external signature request sent by e‑mail includes a unique document identifier code and a link to a dedicated web page where the recipient can type in a text string signature. The actual document requiring signature must be made available to the inventor by alternative means outside of the system, for example, by sending it by separate e‑mail or saving it to a shared drive or patent management system. The draft document as downloaded for signature from ePCT is marked with the same unique document identifier code so that the external signatory can accurately match the signature request received by e‑mail to the documents requiring signature. Furthermore, before signing the declaration of inventorship, the inventor should have reviewed the contents of the application (including the claims) to which the declaration relates.

When the inventor has signed the declaration, you will be notified of this by e‑mail so that you can preview the signed document and submit the Action to the IB. After submission, you will be redirected automatically to the “Documents” section of the international application where you will see the submitted declaration pending processing by the IB.

The PCT eServices Help page contains useful information about the external signature function in general at:

www.wipo.int/pct/en/epct/learnmore.html?N=992

For information on how to submit declarations under PCT Rule 4.17 using PCT‑SAFE, please refer to the “Practical Advice” in PCT Newsletter No. 03/2014 at:

www.wipo.int/edocs/pctndocs/en/2014/pct_news_2014_03.pdf

General information on the filing of declarations under PCT Rule 4.17 is available in the PCT Applicant’s Guide, paragraphs 5.074 to 5.083A, and 6.045 to 6.050 at: