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.
Situations where declarations under PCT Rule 4.17 should not be submitted
Q: I have filed an international application on behalf of a corporate applicant and, in order to facilitate the procedure for entry into the national phase, I included a “Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent” together with my international application. The applicant has now assigned the rights to the application to another company. I will remain the agent of record and will request the International Bureau to record the change of applicant under PCT Rule 92bis. May I also submit a second declaration to include the name of the new applicant?
A: You should not submit a new Declaration as to the Applicant’s Entitlement to Apply for and Be Granted a Patent under PCT Rule 4.17(ii) (hereinafter: declaration under PCT Rule 4.17(ii)) to take into account the fact that a new applicant will replace the original applicant. This is because that declaration is only applicable to those events which occurred before, or on, the international filing date, and not to those which occur after the international filing date.
The declarations under PCT Rule 4.17 must be worded as shown in Sections 211 to 215, respectively, of the Administrative Instructions under the PCT, subject to any necessary inclusion, omission, repetition and re-ordering of any items that are permitted (depending on the declaration concerned). In the case of the declaration under PCT Rule 4.17(ii), the declaration is made that, as at the international filing date, the applicant specified in the declaration was entitled to apply for and be granted a patent.1 The inclusion, omission, repetition and re-ordering of the matters listed under Section 212 are permitted, as is necessary to explain the applicant’s entitlement, however, you are not permitted to delete the wording “as at the international filing date”.
You should therefore, at this stage, only submit to the International Bureau (IB) a request for the recording of a change of applicant under PCT Rule 92bis, together with a new power of attorney in which the new applicant appoints you as agent. Where there has been a change of applicant after the filing of the international application, any designated (or elected) Office would, however, be entitled under PCT Rule 51bis.1(a)(ii) to require any evidence regarding the new applicant’s entitlement to apply for and be granted a patent, and so you may be required, upon entry into the national phase, or within a time limit permitted by the designated Office concerned, to submit such a declaration or other evidence directly to such Offices.
For information on which Offices would require any evidence as to the entitlement to apply for or be granted a patent, please see the Summary of each National Chapter of the PCT Applicant’s Guide, which lists the special requirements, if any, which must be complied with in connection with entry into the national phase, and indicates whether the Office concerned will invite the applicant to comply or, if there is no invitation, what the applicable time limit is for such compliance. It is, nevertheless, highly recommended that any special requirement be complied with at the time of performing the acts for entry into the national phase, because this is more efficient and avoids the risk of forgetting to comply with the requirement later. Note that some designated Offices do not require such evidence where the change has been the subject of a request for recording a change and was reflected in a notification from the IB (Form PCT/IB/306 “Notification of the Recording of a Change”).
For further information on the filing of declarations under PCT Rule 4.17 in general, please see:
- the PCT Applicant’s Guide, International Phase, paragraphs 5.074 to 5.083A, 6.045 to 6.050, and National Phase, paragraphs 5.003 to 5.005, at:
https://www.wipo.int/pct/en/guide/ - Sections 211 to 215 of the Administrative Instructions at:
https://www.wipo.int/pct/en/texts/pdf/ai.pdf - the Notes to Box No. VIII of the request form at:
https://www.wipo.int/pct/en/forms/request/ed_request.pdf
- Where an applicant submits a declaration under PCT Rule 4.17(iii) as to the applicant’s entitlement to claim priority of the earlier application (for example, where the applicant is not the applicant who filed the earlier application or where the applicant’s name has changed since the filing of the earlier application), this should also show the situation as at the international filing date.