PA 06/2017: Recording of a change of agent under PCT Rule 92bis in respect of multiple applications: the difference between submitting a power of attorney relating to a list of PCT applications and the furnishing of a general power of attorney

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 a patent agent and have been asked by a corporate applicant to take over a series of PCT applications from another agent. Some applications would, for the time being, remain with the current agent, whereas I will become the agent for certain other existing applications as well as for all future new applications. The applicant usually files with one particular receiving Office. What would be the best way to proceed with regard to the change of agent and the furnishing of powers of attorney?

A.: You should request the International Bureau (IB) to record a change under PCT Rule 92bis so that you are recorded as the new agent for each of the existing applications which you are to take over. Such requests for change should be accompanied by a power of attorney signed by the applicant.

As a more convenient alternative to submitting individual requests for change and providing a corresponding power of attorney for each application concerned, you may submit a single request in respect of one of the applications only but accompanied by a list of the other application numbers also concerned by the same change. Bearing in mind that you will continue to act on behalf of that same applicant before the same receiving Office for future applications, you may consider filing a general power of attorney signed by an authorized signatory of the corporate applicant rather than submitting a power of attorney for each of the specific applications concerned.

For the purposes of the PCT international phase, a “general power of attorney” is defined in PCT Rule 90.5 as “an existing separate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant”. Its particularity under the PCT is that the original of the general power of attorney must be deposited with the receiving Office while a copy thereof is attached to the relevant correspondence during the international phase, in those cases where waivers do not apply and the applicant’s signature is required.

While the IB has generally waived, under PCT Rule 90.4(d) and 90.5(b), the requirement that separate powers or a copy of a general power of attorney be furnished, it has specified, in accordance with Section 433(b) of the Administrative Instructions under the PCT, particular instances in which a separate power of attorney and/or a copy of a general power of attorney is nevertheless to be submitted (other than where a notice of withdrawal referred to in PCT Rules 90bis.1 to 90bis.4 is submitted). Namely, the IB has specified that a power of attorney must be furnished “upon appointment of, or for any paper submitted by, an agent or a common representative who was not indicated in the request form at the time of filing”.

Please note that, like the IB, many Offices have made notifications in relation to waivers and exceptions thereto, in their capacities as receiving Offices, International Searching Authorities, Authorities specified for supplementary search and/or International Preliminary Examining Authorities. A corresponding table can be found on the PCT home page at:

http://www.wipo.int/pct/en/texts/waivers.html

If you choose to submit a general power of attorney, you should deposit the original with the receiving Office with which the applications in question have been filed (and presumably with which you will file in the future), being careful to retain a legible copy in order to make further copies each time a power of attorney is required, for example, when you submit to the IB requests to record a change of agent or a notice of withdrawal. In this way you would not need to obtain the applicant’s signature each time in those cases.

Templates for preparing powers of attorney, including of a general power of attorney, are available on the PCT website at:

http://www.wipo.int/pct/en/forms/pa/index.htm

Please ensure that you use the relevant template for a “general power of attorney” only if you do choose the option as described above for depositing it with the receiving Office in view of any future applications, and not simply for preparing a power of attorney relating to one or multiple specific applications.

Best practice for submitting requests to the IB for change under Rule 92bis – or indeed any type of request – is to use the ePCT system. In respect of the applications to be taken over by you, it is recommended to upload a PDF version of the letter requesting the IB to record a change of agent for one of the international applications in question and also to include a list of the other international application numbers concerned by the same change, accompanied by a general power of attorney (or a copy of a general power of attorney if one has already been filed with the receiving Office, or failing that, a power of attorney for each application in question). When selecting the document type for upload, please be sure to select the document type “Request for Change under Rule 92bis (for multiple IAs)” as this will facilitate further processing at the IB in order to replicate an electronic copy for each of the applications concerned.

As part of that processing, the IB will check whether ePCT access rights need to be modified. However, the IB does not have the authority to set new access rights in ePCT for any new person who previously did not have any such access rights – the IB can only deactivate and/or reactivate existing access rights. Since the appointment of the former agent is revoked through your appointment as the new agent, any access rights the former agent may have in ePCT will be deactivated by the IB as part of the process of recording the change of agent. You are strongly advised to submit a new online request via ePCT for access rights to each application that you are taking over as agent, unless the former agent had access rights in ePCT and already assigned access rights to you in view of the forthcoming change of agent. Note that, if you file any future applications using ePCT, online access rights will be automatically granted to you and no separate request will need to be made to the IB. The ePCT Support page contains full details about access rights at:

http://www.wipo.int/pct/en/epct/support.html

The following additional information applies to requests under PCT Rule 92bis in general.

– Any list of applications included in a request for change should only contain applications for which the 30 month time limit has not expired. It is recalled that any request for change must reach the IB within 30 months from the priority date. It is therefore recommended to submit any request for change directly to the IB and not through the receiving Office. Beyond this time limit, any changes would have to be made separately before each designated (or elected) Office in the national phase. The applicable time limit is 30 months in all cases, even though a longer time limit for entering the national phase may apply in certain designated/elected Offices.

– If the applicant would like a particular change to be reflected in the published international application, the relevant document must reach the IB before the completion of technical preparations for international publication, which is normally 15 days before the actual date of publication. If the change is requested later but still within 30 months at the IB, it will nevertheless be reflected on the bibliographic data tab on PATENTSCOPE, and the IB will notify (that is, subject to PCT Rule 93bis), all designated or elected Offices concerned of the change if so requested by those Offices, by means of Form PCT/IB/306 – Notification of the Recording of a Change. The IB will also notify the receiving Office and as long as the application is pending before the International Searching Authority, any Authority competent to perform supplementary searches or any International Preliminary Examining Authority, also those Authorities.

– There is no special fee for the recording of a change during the international phase – it is covered by the international filing fee.

For further information about the recording of changes, see the “Practical Advice” published in the following issues of the PCT Newsletter:

– No. 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

– No. 04/2012: Changing access rights in ePCT when there is a change of agent

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