PA 04/2015: Indicating an address for correspondence where a person is not entitled to represent the applicant before the receiving Office

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 going to file a PCT application on behalf of a corporate applicant which is based in the Netherlands (and which has NL residence and nationality). I am a patent attorney in that company’s patent department, a subsidiary of that company which is based in the United States of America (US). Our intention is to file the application with the European Patent Office (EPO) as receiving Office, but I would like to know whether I would be able to act on behalf of the applicant before the EPO if I am based in the US.

A: If the international application is filed at the European Patent Office as receiving Office (RO/EP), provided that the applicant has a residence or principal place of business in one of the States party to the European Patent Convention (EPC), the EPO does not require that the applicant appoint an agent to act before it as a receiving Office.

However, if an agent is appointed, that agent must be:

– a professional representative or an association of representatives entered in the directory of professional representatives maintained by the EPO (see: http://www.epo.org/applying/online-services/representatives.html); or

– a legal practitioner qualified to practice in patent matters in one of the States party to the European Patent Convention and who has his place of business in that State.

If you do not fulfill either of the above conditions for agents before the EPO, the applicant could either appoint another agent who is entitled to represent the applicant before RO/EP, or you could, in accordance with PCT Rule 4.4(d), and provided that no eligible agent has been appointed, be included in the request form as an address for correspondence (by adding your name and address in Box No. IV of the request form and selecting the option “Address for correspondence”). Note that if you do indicate yourself as “agent” in the request form while not being entitled to represent the applicant before the RO, the RO would, in any case, delete ex officio the indication “agent” and indicate instead “address for correspondence” (see PCT Receiving Office Guidelines, paragraph 117).

The advantage of an address for correspondence is that it can be anywhere, and does not have to be linked with a particular country (it can even be in a country which is not bound by the PCT). The person named as part of an address for correspondence would be sent all correspondence regarding the international application in the international phase that would normally be sent to the applicant or the agent, and would also be able to make payments in respect of the application.

However, please note that if you are indicated in the address for correspondence, you would not be entitled to act as agent for the applicant. Any submission to the RO or the International Authorities would have to be signed by the applicant (or the deemed common representative if there is more than one applicant). Please be aware that if you have to spend time obtaining the signature of the applicant, this could be a problem if a time limit for a particular action is due to expire soon.

As far as RO/EP is concerned, it is recalled that on 1 November 2014, the Office changed its practice by relaxing certain restrictions concerning the address for correspondence which may be given by applicants in an international application filed with it in cases where no agent is appointed. These changes included the removal of the restriction for an address for correspondence to be in a Contracting State of the EPC with the result that an address for correspondence may now be that of any person in any country. For further details about the revised practice at the EPO, please refer to the “Notice from the European Patent Office dated 4 September 2014 concerning the use of an address for correspondence in proceedings before the EPO by persons acting without a professional representative or agent” at:

http://www.epo.org/law-practice/legal-texts/official-journal/2014/10/a99...

To find out about the requirements of other PCT receiving Offices regarding the appointment of agents in the international phase, please refer to the PCT Applicant’s Guide, Annex C, and to find out about the requirements of designated (or elected) Offices regarding the appointment of agents in the national phase, please refer to the relevant national chapter summaries of the PCT Applicant’s Guide, at:

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

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