PA 01/2009: Assignment of an international application to an applicant who is neither a national nor a resident of a PCT Contracting State

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.

Q:  I have filed an international application on behalf of a corporate applicant, which is a national and resident of Spain.  The company now wishes to assign the rights to the invention to another company which is a national and resident of Uruguay.  There are also two applicant/inventors named in the international application for the purposes of the US designation, but they are not nationals or residents of a PCTContractingState either.  Will the PCT application still be valid if there are no longer any applicants who are nationals or residents of a PCTContractingState?  If so, which corporate applicant will appear in the published international application?

A:  A PCT application can be assigned at any time during the international phase, to anyone, including residents and nationals of States which are not bound by the PCT.  The requirement under PCT Article 9 that the applicant must be a resident or national of a PCTContractingState only needs to be complied with on the international filing date. Later changes have no influence on the validity of the international application itself.

An assignment to a resident or national of a State which is not bound by the PCT may, however, have consequences on the right to file a demand for international preliminary examination under Chapter II if the demand is filed after the recording of the change in the person of the applicant under PCT Rule 92bis.  A demand may only be filed if the applicant (or at least one of the applicants, if there are more than one) is a resident or national of a PCT Contracting State bound by Chapter II and the international application was filed with the receiving Office of or acting for such a State (see PCT Article 31(2)(a) and Rules 54.1 and 54.2).  Since the new applicant would be neither a resident nor a national of a PCTContractingState, it would not be entitled to file a demand for international preliminary examination under Chapter II.  Therefore, in order for a demand to be validly filed, it would have to be filed in the name of the Spanish applicant, before the recording of the change in the person of the applicant under PCT Rule 92bis;  any subsequent assignment of the international application would have no consequence on the validity of the demand.

Note that if you are going to represent the new applicant, that applicant should sign a power of attorney appointing you.  Ideally, this should be submitted together with the request for recording of the change of applicant.  The International Bureau (IB) will record any such requested change provided it is received by it before the expiration of 30 months from the priority date.

As far as the publication of information concerning the applicant is concerned, if the request for the recording of a change of applicant is made and recorded at the IB prior to completion of technical preparations for publication, the name of the new applicant will be included on the front page of the published international application in the PATENTSCOPE® search service (http://www.wipo.int/pctdb/en/index.jsp);  if it is received by the IB after completion of the technical preparations for international publication, the published international application will include the name of the original applicant.  In both cases, however, the bibliographical data will include (or be updated to include, as the case may be) the name of the new applicant (under the “Biblio. Data” tab of the international application concerned).  The request as filed (Form PCT/RO/101), which includes the name of the original applicant, and the IB’s “Notification of the Recording of a Change” (Form PCT/IB/306) concerning this change will, in accordance with PCT Rule 94.1(b), be accessible to third parties after international publication.  These documents are available in the PATENTSCOPE® search service (under the “Documents” tab) for all international applications whose filing date is on or after 1 January 2006.  For earlier filed international applications, a quick comparison between the applicant’s name under the “Biblio. Data” tab and the one which appears under the “Documents” tab, allows third parties to see if a request under PCT Rule 92bis was recorded by the IB.

 

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