PA 06/2016: Requests for recording of changes under PCT Rule 92bis using ePCT:  situations where access to the international application will be suspended, and the extent to which access will be blocked

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:  The practical advice of PCT Newsletter No. 01/2016 mentions that, when carrying out an ePCT Action to request the recording of a change under PCT Rule 92bis, access to the full contents of the international application may be suspended pending the processing of the PCT Rule 92bis change request by the IB.  Is this the case for all 92bis changes?  Also, will the suspension completely block all access to the international application?

A:  Depending on the type of change, the recording of which is requested under PCT Rule 92bis(“92bis request”) using the dedicated Action in ePCT, all online access to that international application, including to anyone who already had ePCT access rights, may be automatically suspended by the system as soon as the request is submitted.  The suspension of access to all users who have access rights to the international application in ePCT will remain in effect only for the time that is required for the International Bureau (IB) to process the change and check whether any individual access rights need to be deactivated due to the change requested, for example, a request to remove an applicant or agent from the record.  The types of change which will result in automatic suspension of online access in ePCT are:

  • a change in the name, person and/or the address of an applicant or applicant/inventor;
  • a change of name and/or person of an inventor only;
  • a change in the name, person and/or address of the agent; and
  • a change in the type of party (legal entity/natural person); or
  • the deletion of an applicant, inventor or an agent

However, the following types of change will not result in an automatic suspension of online access to the international application: 

  • the addition of a new party;
  • a change of address of an inventor only; or
  • a change in relation to:
  • nationality;
  • residence;
  • country of address;
  • telephone number, fax number or e‑mail address;
  • notification method;
  • applicable designations; or
  • the file reference of the international application.

After clicking on the “Submit 92bis Change Request” button, the user is warned in the case where access will be temporarily suspended, with the message: 

“Due to confidentiality reasons, submitting a Rule 92bis request will temporarily suspend online access to the IA via ePCT pending processing by the IB”

and is given the opportunity to add another change, before continuing with the submission which will suspend access. 

Note that, even if access to the full contents of the international application is suspended pending processing of the change request by the IB, under the “File View” you may consult any documents that you yourself previously uploaded to the file of the international application in ePCT, including the document relating to your 92bis request.

Please note that if a 92bis request is submitted using the “Upload Documents” function in the ePCT system, online access will be automatically suspended pending processing by the IB in all cases, regardless of the type of change requested.  It is therefore preferable to use the Actions tab to submit a 92bis request.

The suspension of online access to an international application takes place as a security measure for the protection of the applicant.  For example, in the case of a change of person of the applicant or agent, this suspension removes any potential problem which may arise, for example, where the appointment of an agent has been revoked by the applicant or his/her new agent, but that agent might still have online access rights to the international application via ePCT. As long as online access is suspended, no external user will be able to access that application online via ePCT until such time as the request for change has been fully processed by the IB, including the verification of ePCT access rights.  The IB prefers to err on the side of caution and suspend all access rights until it has had the opportunity to examine the nature of the change requested, and, where necessary, carry out a follow-up investigation, for example by contacting the applicant, agent or common representative, as the case may be, directly. 

When access to the contents of the international application via ePCT has been suspended, the “IA Status” column of the Workbench shows “access suspended”.  If you try to view the contents of an international application in the “IA Number” tab while access is suspended, the international application will appear showing only the international filing date and the IA Status “Access suspended”.  No other confidential data or documents will be available.  Also, the only documents that will be visible in the File View are those which were previously uploaded by you. 

Even though you will not be able to make use of any of the ePCT Actions while access is suspended, it is still possible to use the “Send ePCT Message” feature, or to upload documents to the IA concerned using the “Upload Documents” tab. 

Once the 92bis request has been properly checked by the IB, it will reset the access rights accordingly in the system.  If the 92bis request is straightforward, and is made during a period of normal workload at the IB, this process should be completed within two working days.

For further information on 92bis requests made using ePCT, as well as on the suspension of access to the international application in ePCT, please see the “ePCT User Guide” at:

http://www.wipo.int/pct/en/epct/pdf/pct_wipo_accounts_user_guide.pdf

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