PA 02/2012: Options for recording a change of applicant around the time of national phase entry

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.

(Prepared in collaboration with Mr. David Reed, former Senior Patent Advisor, The Procter & Gamble Company, and current PCT Consultant)

Q: I am an agent for an international application which I am preparing for entry into the national phase. My client (a corporate applicant) has just sold the invention and application to another legal entity and the new owner, which would like me to continue in my functions as agent for the application, would like to ensure that the application is processed and granted in its name. I only have two weeks before the 30 month deadline for national phase entry. What is the best way to proceed? Should I enter the national phase in the name of the new applicant, or enter it in the name of the company which is currently named as applicant (the “original applicant”) and change the name before the national offices after entry into the national phase?”

A: Either of these approaches will achieve the desired result. It may save you considerable work and/or expense, however, especially if you intend to enter the national phase in a large number of countries, if you make use of PCT Rule 92bis and record the change before the completion of the international phase. The change would then have effect in all DOs/EOs and you would be able to enter the national phase in the name of the new applicant.

PCT Rule 92bis allows you to record a number of changes in the bibliographic information of an international application, including a change in the person, name, residence, nationality or address of the applicant, as well as a change in the person, name or address of the agent, the common representative or the inventor. If the change of applicant is requested by the original applicant, or by the agent representing that applicant, no additional documentation is required by the International Bureau (IB). Any recorded change will be communicated to the applicant and each designated Office (DO) or elected Office (EO) on Form PCT/IB/306 (“Notification of the recording of a change”). As far as the publication of this information in PATENTSCOPE is concerned, while, in this situation, there will be no republication of the front page of the international application under the “document tab”, the bibliographic data under the “PCT bibliographic data” tab will be amended to reflect the change.

Although you can also submit the request to record a change under PCT Rule 92bis to your receiving Office, this may delay the arrival of the request at the IB. It is therefore strongly recommended that you file the request directly with the IB. Even by filing the request directly with the IB, you would have to act quickly in your case, however, as a request to record a change under PCT Rule 92bis must be received by the IB before midnight, Geneva time, on the day of the expiration of 30 months from the priority date. Nevertheless, as long as the request reaches the IB in time, it will be recorded, even if certain evidence that might be required by the IB in a particular case is only furnished after the 30 month time limit.

The IB will not record the change if it is received after the 30 month deadline and, as a result, the application would enter the national phase in the name of the original applicant, and you would then have to proceed with requesting the change before each DO/EO where you wish to enter the national phase. Note that, although the request for recording a change under PCT Rule 92bis can be sent to the IB by mail or courier, the quickest ways are by fax or, preferably, by using the PCT Online Document Upload service at:

http://www.wipo.int/pct/en/service_center/

or ePCT (see PCT Newsletter No. 01/2012 for further information) at:

https://pct.wipo.int/ePCT

Even if you do request the recording of a change immediately, your international application must enter the national phase in the countries of commercial interest within two weeks (30 months); in peak periods, two weeks may not be sufficient time for the IB to record the change and issue the Form PCT/IB/306 before you enter the national phase (although, in the case of many DOs/EOs, you will have at least an extra month where a later time limit for entry into the national phase applies under PCT Article 22(3) or 39(1)(b) in respect of the those Offices). It may help, if you are working to a tight deadline, if you contact the processing team at WIPO which is responsible for your international application, and ask them if, given the approaching deadline and your desire for the information to reach the DOs/EOs as soon as possible, it would be possible to give priority to your request for recording the change of applicant. The contact details for the relevant authorized officer are indicated at the bottom of Form PCT/IB/301. Also, as far as getting feedback on whether the change has been recorded by the IB is concerned, if you request to receive notifications by e mail or by advance e mail from the IB, you will receive your copy of Form PCT/IB/306 quicker than if you just receive paper notification.

Although most DOs/EOs will accept the change recorded under Rule 92bis without requiring further evidence, some may request a copy of the assignment (or other document) attesting to the transfer of the application to the new owner from the applicant listed in the published international application. Any specific requirements under PCT Rule 51bis (“Certain national requirements allowed under Article 27”) are indicated in the respective National Chapters (Summary) of the PCT Applicant’s Guide at:

http://www.wipo.int/pct/en/appguide/index.jsp

Please ensure that any document that may be required by a particular DO/EO is sent directly to that DO/EO, and not to the IB.

If you cannot submit the request for the recording of a change to the IB before the 30 month deadline, then in order to effect the desired change, you will have to proceed, under a variety of national laws, before each DO/EO where you wish to enter the national phase. The procedures involved, should be detailed under the country’s national law. They may be somewhat laborious and may require country specific, dual language assignments, transfer taxes, or other country specific formalities, as well as agent’s fees, to effect the change.

In view of the last-minute nature of the change, whichever of the two procedures is followed, you would be advised to work with the local agents to ensure that the proper procedure has been followed.

It is important to note that, for the purpose of entering the national phase in the United States of America (US), the applicant(s) must be the inventor(s), thus, presuming that your international application included one or more applicant/inventors for the purposes of the US designation, the applicant/inventors must remain as applicants for US.