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 am acting as agent for an applicant who filed an international application three months ago. The applicant recently moved, so I would now like to know what is the best way to ensure that the new address is the one which is included in the bibliographic data of the published PCT application?

A: A change of address should be notified by way of a request for recording of a change under PCT Rule 92bis(hereinafter: 92bis request). Although there is nothing to prevent you from sending your 92bis request to the receiving Office, this is not the best practice, as the receiving Office will then only forward it to the IB for recording. Not only does this add an extra step to the process, but also it may take days, or even weeks, before the receiving Office transmits the 92bis request to the IB, noting that the IB must receive it before the expiration of 30 months from the priority date (PCT Rule 92bis.1(b)). It is therefore always recommended that you submit the request directly to the IB.

In order to ensure that the new address appears in the published international application it must be received by the IB, at the latest, by midnight on the day before completion of technical preparations for publication (which takes place 15 days before the publication date). It is always better to submit it well in advance of this deadline, however, in case there is a problem with the request. The IB will confirm to you (using Form PCT/IB/306) that the change has been made, sending a copy of this information to the receiving Office, the International Searching Authority, any Authorities specified for supplementary search, the International Preliminary Examining Authority and the designated (or elected) Offices concerned.

Note that even if the completion of technical preparations for publication deadline is missed, the 92bis request would still be processed by the IB (provided that it is received by the IB before the expiration of the 30‑month time limit). The application would not be republished, but the applicant’s address would be updated accordingly in PATENTSCOPE under the “Biblio. Data” tab of the international application concerned, and would thus be available to third parties. Any 92bis request that is received by the IB after the 30‑month time limit would not be recorded by the IB, and it would be up to the applicant to notify each designated or (elected) Office separately of the change.

Please see below the different ways in which 92bis requests can be made before the IB, starting with the best practice and ending with the least recommended way.

ePCT Action in ePCT private services

The best way to make a 92bis request is to use the corresponding “Action” in ePCT private services. This allows you to fill in a simple web form online that is tailored to 92bis requests, and eliminates the need to prepare a letter. In order to do this, you would need to have access to the particular PCT application in ePCT.

In order to submit the online 92bis request:

– open the international application and go to the “Actions” tab;

– select from the pull-down list the action “Rule 92bis change request” and click on “OK”;

– select the party in respect of which the change is requested to be recorded and click on “Edit/Replace existing party”;

– complete the web form to edit the address of the applicant;

– click on “Confirm”;

– sign the 92bis request; and then

– click on “Submit 92bis Change Request” to send your request to the IB for processing.

A document entitled “ePCT Action: Rule 92bis change request” will then be transmitted to the IB for processing, and you may consult this document in the contents of the international application under “File View”, even though access to the full contents of the international application may now be suspended, due to confidentiality reasons, pending the processing of the Rule 92bis change request by the IB.

ePCT actions under ePCT private services will be processed more quickly, accurately and efficiently than other methods of submitting 92bis changes. Besides the obvious time‑saving involved in sending this 92bis request online direct to the IB, one advantage of using the relevant action in ePCT is that by using the web form provided, you are specifying the changes directly, which eliminates any risk of the IB misinterpreting or mistyping the change. Furthermore, as the action is done directly in the file of a particular international application, there is no risk of the information being applied to the wrong application file. For further information on how to use the 92bis action in ePCT private services, see the “ePCT User Guide for Applicants and Third Parties”, pages 124 to 130, at:

https://pct.wipo.int/LoginForms/epct.jsp

ePCT Action in ePCT public services

There is also an ePCT Action in ePCT public services, however, as you will presumably be submitting your 92bis request before publication, this will not apply to you as the ePCT Action for 92bis requests is only available in public services after an international application has been published.

Document upload under ePCT public services

If an international application has not yet been published, and if you are not in a position to use the relevant action in ePCT private services, for example, if you do not have access to the application, and need to submit a 92bis request urgently, the next best practice is to submit a letter via ePCT public services. For this, you need to create a WIPO account (a quick and simple procedure), but do not need to authenticate it with a digital certificate in order to access ePCT public services. The letter containing the 92bis request would need to be converted to PDF format, and then uploaded to the international application concerned.

This way is faster than sending by mail, and is not subject to the problems of faxes where there is a risk that either the document does not arrive at the IB, or not all of the pages arrive at the IB. Furthermore, it is more reliable as the document is inserted directly into the application file, without having to be manipulated manually. Note, however, that for confidentiality reasons, as with the 92bis action under ePCT private services, online access will be automatically suspended pending processing at the IB. For further information on document upload, see the step‑by‑step guide accessible via the “Shortcuts” on the ePCT Portal at:

https://pct.wipo.int/LoginForms/epct.jsp

Faxing

Although 92bis requests may be sent by fax to the IB, and this mode of transmittal is preferable to sending such requests by mail, it is not particularly recommended due to the risks of failed or incomplete submissions, as stated in the paragraph above. There may also be flaws in the fax printout which may result in mis-spellings of information, such as the applicant’s address.

Mailing

Mailing 92bis requests is not recommended where the request needs to be submitted quickly, and comes with risks of failure to meet the applicable time limit or loss in the post.

Please note that the IB does not accept 92bis requests sent by e‑mail.

For further information on submitting 92bis requests in general, please see the PCT Applicant’s Guide, Introduction to the International Phase, paragraphs 11.018 to 11.022.