PA 11/2010: (no title)

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 have filed an international application with the National Institute of Industrial Property (France) as receiving Office (RO/FR) on behalf of a sole applicant who is neither a resident nor a national of France, with the consequence that the application is being transmitted under PCT Rule 19.4(a)(i) to the International Bureau as receiving Office (RO/IB) for processing on the grounds that RO/FR is not competent under PCT Rule 19.1 to receive the international application.  Since I cannot represent the applicant as I am not entitled to practice before the Office of the country of residence/nationality of the applicant, the applicant wishes to find an agent in the country in which he resides.  In the meantime, the applicant would like me to proceed with the payment of the fees to avoid any late payment fee being charged, or even the withdrawal of the international application.  I had intended to pay the fees for the filing of the international application to RO/FR using my company’s deposit account with the Office, but would now like to pay the fees, which are now payable to the RO/IB, by credit card.  Am I entitled to pay the fees on behalf of the applicant, given that I will not be considered an appointed agent for the application?

A:  If an international application is filed with the International Bureau of WIPO as receiving Office (RO/IB), or transmitted to the RO/IB under PCT Rule 19.4, the RO/IB does not require that the applicant be represented by an agent.  However, if an agent is appointed, it must be an agent who is entitled to practice before the RO/IB (that is, a person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant is a resident or national) (PCT Rule 83.1bis(a)).  As you are not entitled to practice before the Office of the country of residence/nationality of the applicant, or which is acting for such a country, the RO/IB will make an ex officio correction to the request form and change your status from “agent” to “address for correspondence” (see PCT Rule 4.4(d)).  As an address for correspondence, you would receive any correspondence which would normally be sent to the applicant or agent (including Form PCT/RO/102 (Notification Concerning Payment of Prescribed Fees)), but any correspondence from the applicant to the receiving Office would need to be signed by the applicant in accordance with PCT Rule 92.1.  The payment of fees in respect of the international application does not require the applicant’s signature, however, so you are entitled to pay the fees.  This is particularly beneficial for the applicant as it may take longer for the applicant to appoint a new agent than the time remaining for the payment of the fees.

The RO/IB will assign a new international application number (PCT/IB2010/……) to the application.  Therefore, before paying the fees, you should wait until that new number is communicated so that you can refer to it, noting that, because the time limit for payment of fees in the case of a transmission to the IB under PCT Rule 19.4 is one month from the date of receipt of the application by the IB (see PCT Rule 19.4(c)) (as opposed to one month from the date of receipt of the application by the Office with which it was initially filed) you should have a bit more time for paying the fees. 

As you wish to pay the fees by credit card to the RO/IB, you should use the PCT E‑payment Service.  For this, you must furnish an e‑mail address to the IB to which instructions for online credit card payment will be sent, and include an indication that you wish to pay the fees by credit card.  When filing international applications with the RO/IB under PCT Rule 19.1(iii), this is normally done by including an e‑mail address in Box No. IV of the request form (Form PCT/RO/101), and by checking the box marked “credit card” under “mode of payment” on the fee calculation sheet annexed to the request form, or by making the corresponding indications in the PCT‑SAFE software.  However, as you will probably not have done this, you can furnish the relevant information separately via fax (+41‑22 910 06 10), mail or preferably by means of the Online Document Upload System (using the “General Correspondence” indexation type – for other post-filing correspondence with the RO/IB to be uploaded via the Online Document Upload System, more specific indexation types should be chosen wherever possible).  Please note that the RO/IB will not accept the fee calculation sheet or correspondence regarding E‑payment by e‑mail.

The RO/IB will send the necessary instructions for payment to you by e‑mail, regardless of whether you have the right to represent the applicant.  The e‑mail will contain a link to the corresponding online transaction in the PCT E‑payment system where you will be able to complete the transaction in a secure and confidential manner. 

Once the agent who is entitled to represent the applicant has been appointed, the applicant or the newly appointed agent should send a request for recording of a change under PCT Rule 92bis to the IB, which will then issue Form PCT/IB/306 “Notification of the recording of a change”, a copy of which will be sent to you.  Subsequently, your address will no longer be regarded as the “address for correspondence”.  Any further correspondence relating to the application will be sent to the newly appointed agent, and not to you.

For further information on the filing of international applications with RO/IB, see:

http://www.wipo.int/pct/en/filing/filing.html

and for further information on the payment of fees using the PCT E-payment service, see the User Guide at:

http://www.wipo.int/patentscope/en/service_center

 

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PCT Implementing Rules