PCT AG-IP 11.018 What should be done where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative?

Rule 92bis
Section 422

11.018.   What should be done where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative?  Where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative, the applicant or the receiving Office should ask the International Bureau to record the change.  If so requested, the International Bureau records the change and notifies all Offices and PCT Authorities interested in the change accordingly.  Any such recording is free of charge.  If the request for a change in the person of the applicant is made by the applicant himself or by his agent, it is not necessary to produce for the International Bureau any assignment or other document by means of which the change in the person of the applicant was effected.  Assignments and other documents relating to the right to file the international application may, however, be required by the designated Offices once national processing has started;  the National Chapters give details on this matter.

11.019.   It is not necessary, in order for a change in the person of the applicant to be recorded, that the new applicant be a resident or national of a PCT Contracting State;  the PCT does not contain any restriction as to whom an international application may be assigned.  The applicant’s right to file the international application is determined on the basis of the applicant(s) indicated in the request at the time when the international application is filed (see paragraph 5.020).  However, the residence and nationality of the new applicant must be borne in mind in considering whether that applicant has the right to file a demand for international preliminary examination (see paragraphs 10.017 and 10.018).

Article 22(1)
39(1)(a)
Section 422(a)(iii)

11.020.   The request for recording of the change must be made in writing and may be sent either to the receiving Office or to the International Bureau.  There is no special form for requesting the recording of changes under Rule 92bis;  it is recommended to file such requests directly with the International Bureau through ePCT (signing in with strong authentication or without strong authentication at https://pct.wipo.int/ePCT).  The International Bureau records the change if the request for recording is received by it before the expiration of 30 months (regardless of the precise time limit applicable, Office by Office, such as 31 months or later) from the priority date, regardless of whether a demand for Chapter II has been filed before the expiration of 19 months from the priority date, and regardless of whether any of the Offices designated has notified the International Bureau that the modification of PCT Article 22(1) is incompatible with its applicable national law.  The International Bureau will also notify all designated Offices of any such changes.  The legal effect of the recorded change will vary from Office to Office.  In any case, as is generally the case, Offices are entitled to require additional evidence or documents in the national phase regarding any change requested during the international phase (for information on the Offices which require additional documents in the national phase, including a new request for change specifically for the national phase before a particular Office, see the relevant Summary in the National Chapters).  If the request is made shortly before the expiration of the time limit indicated above, it is recommended that it be sent directly to the International Bureau so as to be actually received by the latter on time.  Where the 30 month time limit has expired, and the applicant has entered the national phase, the recording of the change would need to be requested directly with the relevant designated/elected Offices under the applicable national procedures.

Rule 90.3

11.021.   Where the request for a change in the person of the applicant is made by a person not yet named in the request (hereinafter referred to as “the new applicant”) without the written consent of the applicant, a copy of an assignment or other documentary evidence supporting the change in person must be filed with the request for the change.  Where the request for a change in the person of the applicant is made by an agent of the new applicant, a power of attorney signed by the new applicant must be furnished at the same time unless the Office or Authority with which the request is filed has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be submitted (see paragraphs 11.008 and 11.009).

Rule 90.3
92bis.1(a)

11.022.   Where the request for a change in the person of the applicant is made by the agent of record, a power of attorney appointing the agent, signed by the new applicant, should be furnished at the same time, if the agent is to represent the new applicant unless the Office or Authority with which the request is filed has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be submitted (see paragraphs 11.008 and 11.009).

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip11.html

Date retrieved: 24 November 2017

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