PA 03/2012: Recording a change of applicant when there is also a change of agent

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 refer to the “Practical Advice” that was published in PCT Newsletter No. 02/2012 concerning the recording of a change of applicant. In the example cited, it was the agent of record who requested the change of applicant. What would be required if the new applicant wished to appoint a different agent?

A: This reply presumes that there is one corporate applicant and one or more applicant/inventors for the purposes of the US designation. Where there is to be a change of agent at the same time as a change of applicant, the new agent could request the International Bureau (IB) to record the change. In his or her request to the IB, the agent should make it clear that there is both a change of agent as well as a change of applicant. Please note, however, that where no correspondence about the transfer of ownership of the application has been received from the agent of record or the original applicant, the following documents would be required by the IB:

1. a copy of an assignment or other documentary evidence supporting the change of applicant; and

2. a power of attorney signed by the new applicant in favor of the new agent (even if the receiving Office with which the international application was filed has waived the requirement that a power of attorney be submitted).

An alternative way of requesting the recording of the change, if, for example, it proves difficult to obtain a copy of the assignment, would be for the (original) applicant or (original) agent to submit a request for change of applicant. However, it would still be necessary for the new agent to be appointed – for this, the new agent could, once the original applicant or agent has submitted his/her request under PCT Rule 92bis, submit to the IB a request for the recording of a change of agent, together with a power of attorney signed by the new applicant.

The following additional information applies to requests under PCT Rule 92bis in general. If the applicant wishes that a particular change be taken into account for the international publication of the international application, any missing document(s) must reach the IB before the completion of technical preparations for international publication (normally 15 days before the actual date of publication). If the missing document(s) reaches the IB too late for the change to be reflected in the international publication, it will nevertheless be reflected in the bibliographic data on PATENTSCOPE, and the IB will notify, subject to PCT Rule 93bis, all designated or elected Offices concerned of the change, by means of Form PCT/IB/306.

Note that, as long as a request for recording a change is received by the IB prior to the 30 month time limit for such requests under PCT Rule 92bis, any documents that may be required, if the designated Offices are to be notified of the change, may be submitted later – the IB normally sends an invitation to furnish any missing documents within the time limit prescribed under PCT Rule 92bis, or within one month from the date of mailing of that invitation, whichever time limit expires later.

It is recalled that, although most designated or elected Offices will accept the change of applicant recorded under PCT 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

For further information on requesting the recording of changes under PCT Rule 92bis, please see the practical advice that was published in PCT Newsletter No. 02/2012, and the PCT Applicant’s Guide, International Phase, paragraphs 11.018 to 11.022. 


 

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