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 the agent for an international application which has entered the national phase in various States. Since the name of the applicant for the international application was not the same as the name of the applicant for the earlier application (the company had changed its name), the priority of which was claimed, I submitted, together with the international application, a declaration under PCT Rule 4.17(iii) as to the applicant’s entitlement, as at the international filing date, to claim priority of the earlier application. One of the designated Offices, however, is requesting further information relating to the change of name. I thought that the purpose of submitting a declaration was to avoid having to submit further documents in the national phase. Please could you clarify this matter?
A: A designated (or elected) Office (hereinafter: “designated Office”) would normally be entitled to require documents or evidence under its national law where the name of the applicant in the priority document is different from that which is indicated in the international application. However, where a declaration under PCT Rule 4.17(iii) has been filed, either with the international application, sometime thereafter during the international phase (prior to the expiration of the time limit under PCT Rule 26ter), or upon entry into the national phase, the designated Office should not require any other document or evidence unless it may reasonably doubt the veracity of the declaration (see PCT Rule 51bis.2(iii)).
Similar provisions also apply to other declarations under PCT Rule 4.17:
(i) declaration as to the identity of the inventor (PCT Rule 51bis.1(a)(i));
(ii) declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent (PCT Rule 51bis.1(a)(ii)); and
(iii) declaration of inventorship (PCT Rule 51bis.1(a)(iv)) (only for the purposes of the designation of the United States of America).
Where a declaration is made under PCT Rule 4.17(v) (declaration as to non-prejudicial disclosures or exceptions to lack of novelty (PCT Rule 51bis.1(a)(v)), the designated Office is free to require further documents or evidence because this concerns non-prejudicial disclosures and exceptions to lack of novelty, which is a substantive matter of patentability.
Although the Regulations governing the acceptance of declarations by designated Offices, which entered into force on 1 March 2001, were initially subject to notifications of incompatibility with the national law of a few States, all of those States have since then withdrawn those notifications of incompatibility. This means that no designated Offices are generally entitled to require a national-type declaration on the subject matters covered by the declarations referred to in PCT Rule 4.17, or indeed to require further information other than what is contained in the standardized wording of the declaration. As indicated above, however, there is an exception to this whereby, if the designated Office doubts the veracity of a PCT declaration or the indications in the declaration, it is entitled, under PCT Rule 51bis.2, to request further proof or evidence on the subject matter in question. This would be on a case-by-case basis though – there cannot be a general requirement by the Office.
The intention of PCT Rules 4.17 and 51bis.2 is to keep those cases where a designated Office requests further proof or evidence to a minimum. To the extent that the national law of a designated Office contains different requirements from those of the PCT, the provisions of the PCT must prevail, and it is the responsibility of the State concerned to ensure that this is the case. In adopting the Regulations regarding the submission of declarations to the International Bureau (IB) during the international phase, the member States agreed that, if an applicant submits a declaration that complies with the standardized wording contained in the Administrative Instructions under the PCT within the applicable time limit, such declarations should generally be accepted at face value.
If the wording of a declaration does not conform to that standardized wording (see Sections 211 to 215 of the Administrative Instructions under the PCT at: https://www.wipo.int/pct/en/texts/pdf/ai.pdf), the IB will notify the applicant (by way of Form PCT/IB/370), and the applicant will have the opportunity to correct the declaration within the time limit under PCT Rule 26ter.1. If, upon entry into the national phase, the wording of a declaration does not conform to the standardized wording, any designated Office may accept that declaration for the purposes of the applicable national law, but is not required to do so. For further information on the importance of using the standardized wording of declarations, see the “Practical Advice” published in PCT Newsletter No. 10/2010.
If the circumstances of a particular case are such that the standardized wording is not applicable, the applicant should not attempt to make use of the declarations provided for in PCT Rule 4.17, but rather will have to comply with the relevant national requirements upon entry into the national phase.
For further information on furnishing declarations, see the PCT Applicant’s Guide, paragraphs 5.074 to 5.083, and to find out what are the requirements of the various designated States under PCT Rule 51bis, please refer to the relevant Summaries in the National Chapters of the Guide at:
Date retrieved: 30 December 2018