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.
Where an applicant can file a PCT application and who is entitled to act as agent
Q: As a US intellectual property agent, I am assisting a US client with German nationality who wishes to submit a PCT application. Can my client’s PCT application be filed with the European Patent Office (EPO) and can I represent the applicant as agent?
A: The question of where, or with which receiving Office (RO), an applicant can file a PCT application and who may represent him/her, is primarily determined by the applicant’s nationality and country of residence.
In accordance with Rule 19 of the Regulations under the PCT, the applicant can choose to file an international application with:
(i) the national Office of (or the Office acting for) the Contracting State of which the applicant is a resident;
(ii) the national Office of (or the Office acting for) the Contracting State of which the applicant is a national; or
(iii) the International Bureau, irrespective of the applicant's nationality or residence.
Under PCT Article 2(xii), “national Office” includes any intergovernmental authority which several States have entrusted with the task of granting regional patents. If there are multiple applicants, these conditions must apply to at least one of them.
Assuming that your US client is a resident in the United States, this means that your client may file a PCT application with the United States Patent and Trademark Office (USPTO) (RO/US), the German Patent and Trade Mark Office (RO/DE) or the European Patent Office (RO/EP) in connection with his or her nationality, or with the International Bureau (RO/IB). However, for inventions that are made in the United States of America, national security measures may apply. This will require you either to obtain a foreign filing license from the USPTO before filing the international application at any of the other three receiving Offices, or to have first filed a patent application for the same invention at the USPTO and six months to have elapsed without any national security order being placed on that earlier application (refer to https://www.uspto.gov/web/offices/pac/mpep/s140.html).
The determination of who is entitled to represent the applicant as an agent during the international phase is dependent on the receiving Office where the application is filed (see PCT Rule 90.1). Each receiving Office establishes its own criteria for representation and we reflect this data in Annex C of the PCT Applicant’s Guide (https://www.wipo.int/pct/en/guide/index.html). Where the IB is the receiving Office, only persons with the right to practice before the national or regional Office of the applicant's residence or nationality can be appointed as an agent under PCT Rule 83.1bis.
In your case, unless you are registered to practice before the EPO or the German Office, you would only be entitled to represent the applicant for applications filed with the USPTO or the IB. This being said, although you may be restricted from handling the application process as an agent before RO/EP and RO/DE (assuming you are not registered to practice before them), this does not prevent you from filing the PCT application with these Offices on behalf of your client. In cases where an agent cannot be recorded as such, there is the option of being recorded as an "address for correspondence" under PCT Rule 4.4(d). This allows you to receive correspondence which would normally be addressed to the applicant or his/her agent and enables you to make payments on behalf of the applicant. However, as “address for correspondence” you cannot sign the Request form (or any subsequent submissions) as an agent for the applicant. If you are not able to obtain the applicant’s signature, any missing or invalid signature in the application would be considered a defect under Article 14 of the PCT (see the PCT Applicant’s Guide https://www.wipo.int/pct/en/guide/ip06.html#_correction_defects). This defect will not prevent the applicant from obtaining an international filing date but a replacement sheet with a valid signature must be submitted subsequently. Furthermore, if there is more than one applicant and no agent is acting for them, the order in which applicants are named in the Request form is important since the first named applicant who is entitled to file an international application with the particular receiving Office selected will be considered to be the common representative under Rule 90.2(b) (unless the applicants have themselves appointed one of them as common representative, as highlighted in a Practical Advice published in PCT Newsletter 07-08/2014 entitled “The importance of the order in which applicants are named in the request form where no common agent has been appointed”).
A convenient way for you to file the international application would be to use ePCT. By default, the user who creates the new PCT application is set as eOwner and can manage the PCT application process via ePCT. The “external signature” feature allows an authorized signatory (in this instance, the applicant) to apply a signature to draft documents that are held in ePCT without requiring access to the system. You would also have the option of assigning access rights directly to the applicant so that they can access the application even prior to filing, and apply their signature where required. In this way, you would be able to draft any correspondence necessary for the applicant (for example, a letter requesting a change under PCT Rule 92bis, a letter requesting any amendments under Article 19 or a withdrawal of the application) and the applicant could then apply their signature to the correspondence, either as an external signature or directly within ePCT.
For information on the filing of international applications with RO/IB, please refer to:
https://www.wipo.int/pct/en/filing/filing.html
For detailed information on filing using ePCT, please consult:
https://www.wipo.int/pct/en/epct/learnmore.html?N=567
Further information on this topic can be found in the “Practical Advice” published in the following issues of the PCT Newsletter:
No. 04/2015: Indicating an address for correspondence where a person is not entitled to represent the applicant before the receiving Office;
No. 03/2019: Filing strategies: factors to consider when deciding whether to file an international application with a national (or, where applicable, regional) Office or the International Bureau as receiving Office – an example of a US resident who is a national of Canada; and
No. 06/2020: Entitlement to practice before the International Bureau as receiving Office (when an international application is assigned to an applicant from a different country).