Practical Advice
Corrigendum to the Practical Advice in the February 2025 issue of the PCT Newsletter (No. 02/2025)
A portion of the following sentence published in the Practical Advice on page 7 of the above-mentioned issue was included in error, and has been removed (here shown as stuck through):
“However, it should be noted that in the case of a correction of a priority claim, if the International Bureau or receiving Office receives the notice of correction after the time limit but before it declares that the priority claim is considered void via FORM PCT/IB/111 (and not later than one month after the expiration of the…”
As the Practical Advice is a valuable resource for PCT users and continues to be searched and referenced, it is important that the information provided is as accurate as possible. We have therefore revised the original publication to reflect this correction.
Acting as an authorized signatory for a corporate applicant
Q: Our company is headquartered in Spain and has a subsidiary in Mexico. We are planning to file an international application in the name of our subsidiary with the receiving Office of Mexico (RO/MX), which would give us a wider choice of International Searching Authorities (ISAs), and we would like our in-house practitioner to manage and sign all submissions in the international phase. How should we designate this person in the PCT Request form (Form PCT/RO/101) and would it make any difference if we file with the International Bureau of WIPO as receiving Office (RO/IB)?
A: In cases where a qualified patent practitioner is part of a company's IP department, that person can be indicated as a patent agent by listing them as an agent in Box No. IV of the PCT Request form (agent, common representative, or address for correspondence), in accordance with PCT Rule 90.1. However, to act in this capacity, the in-house counsel must be entitled to practice before the receiving Office where the application is filed. If your in-house counsel managing the application is not entitled to practice before RO/MX, they cannot represent your company as an agent before RO/MX (PCT Rule 90.1) and should not be indicated as an agent in Box IV of the Request form.
As an alternative to having an appointed agent entitled to practice before RO/MX, any practitioner empowered by your company's internal procedures to represent it, may act as the company’s authorized officer/signatory. Most receiving Offices, including RO/MX, do not require applicants to be represented by an agent during the international phase and an authorized officer/signatory can sign the application and any subsequent correspondence, including notices of withdrawal, on behalf of the company.
Authorized Officers/signatories do not need to have the right to practice before the RO concerned. However, it could be beneficial to have the application managed by someone familiar with the relevant procedures before the RO, ISA and designated Offices where the application may enter the national phase.
In this case, when completing the Request form of the PCT application, the authorized Officer/signatory should not be indicated as agent or common representative in Box No. IV (although they may be indicated as the address for correspondence but this would not authorise them to sign on behalf of the company), and equally, if using ePCT or any corresponding electronic filing system, the "agent" option should not be selected. Instead, the name of the person signing should be clearly indicated next to their signature in Box No. X, making it clear that it is “signed on behalf of” the company, and providing the name of the company. When filing with RO/IB, ePCT has a drop-down box which allows you to state that the person signing on behalf of the corporate applicant has the capacity to do so. Unlike the appointment of an agent, no power of attorney is required, and under ordinary circumstances, no evidence is required as to the capacity to sign for the corporate applicant (Paragraph 127 of the Receiving Office Guidelines).
If you were to file the international application with RO/IB, the right to act as an agent before RO/IB is governed by PCT Rule 83.1bis, which ties the right to act as an agent for a particular PCT application to the nationality and residence of the applicant(s). This allows for a broader choice of agents when there are applicants of different nationalities and residences. For example, in your case, if the in-house counsel does not have the right to practice before RO/MX but has the right to practice before the receiving Office of Spain, they could then be indicated as an agent before RO/IB if the parent company headquartered in Spain is also an applicant.
Please note that if you indicate a person who is not entitled to practice before the RO as an "agent", the RO may change the indication ex officio to an “address for correspondence” (PCT Rule 4.4(d)). This person will then receive any correspondence for the applicant but will not be entitled to act on behalf of the applicant. Any application or subsequent correspondence drafted by the person acting as an address for correspondence will need to be signed by the applicant (or an authorized officer/signatory of any corporate applicant). For more information, please consult the “Practical Advice” published in the following issues of the PCT Newsletter:
- Indicating an address for correspondence where a person is not entitled to represent the applicant before the receiving Office (04/2015):
https://www.wipo.int/pct/en/newslett/practical_advice/pa_042015.html
- Where an applicant can file a PCT application and who is entitled to act as agent (02/2024):
https://www.wipo.int/pct/en/newslett/practical_advice/pa_022024.html