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 includes a corporate applicant and two inventors. Usually, I include declarations of inventorship under PCT Rule 4.17(iv) for the purposes of the designation of the United States of America at the same time as filing the international application. However, as I did not have time to obtain the inventors’ signatures before filing the application, I decided to file the international application without the declarations, and then submit them later, once I had obtained the signatures. Should I have submitted the declaration anyway upon filing, even though I did not have the inventors’ signatures, and then filed replacement sheets with their signatures? If filing the declarations separately from the international application, is there anything special that I need to do? What is the time limit for submitting declarations and do I need to pay any extra fees when submitting them later?
A: If you have not been able to obtain the signatures of the inventors for a declaration under PCT Rule 4.17(iv) before filing an international application, there is no point in submitting the declaration without signatures. It would not be taken into account and you would only receive an invitation, by means of Form PCT/IB/370, to submit a corrected declaration under PCT Rule 26ter. It is preferable, therefore, to file the international application without the declaration, and submit a signed declaration later.
If the declaration is sent separately from the international application, it should be sent directly to the International Bureau (IB). The time limit for filing a declaration during the international phase is 16 months from the priority date. However, any declaration that the IB receives after that time limit will be considered to have been received on the last day of that time limit if it is received before the technical preparations for international publication have been completed (see PCT Rule 26ter.1).
Regardless of when you submit a declaration under PCT Rule 4.17(iv), you need to ensure that the declaration is signed and dated by each inventor. If the inventors are not based in the same area, you can ask each inventor to sign a separate form, provided that the name of both inventors is given on both copies. When submitting the declaration separately from the international application, the procedure may vary, however, depending on whether you are preparing a paper copy, whether you are using e-filing software such as PCT-SAFE, or whether you make use of the corresponding online Action under ePCT private services, as explained below.
If the declaration is submitted on paper (or by fax), the declaration must contain a handwritten signature and should be accompanied by a letter explaining the addition of the declaration (see Section 216 of the Administrative Instructions under the PCT).
The international application (IA) number must be included on each declaration, even if the IA number is included in the accompanying cover letter, since US national law requires that the number be included on the declaration itself (see 37 CFR 1.63(b)(1) at: http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf). If the IA number is missing, you would have to submit a national declaration in the US national phase, and, if submitted after 30 months from the priority date, also pay a fee.
Therefore, if you submit a declaration after filing the international application, you will have to wait until the receiving Office has notified you of the IA number of the application concerned, as it should be included on the declaration before it is signed by the inventors.
For international applications filed using PCT-SAFE, declarations can be prepared using the software, even if the international application has already been filed. From the “Submitted” folder of the PCT-SAFE File Manager, double-click to open the submitted application and go to the ‘Declarations’ page. From the pull-down list select the declaration that you wish to submit, and click "Add". The details of the inventors that have been entered on the “Names” screen will automatically appear on the “Declarations” screen.
As with paper filings, it is equally important to ensure that the IA number is indicated on the declaration itself before it is signed by the inventors. If you prepare the declaration after the international application has been filed, the software will prompt you to input the IA number and that number will then be included in the printout of the declaration. Please note, however, that any printout or other copy of the declaration made at the time of filing contains the wording “this declaration is directed to the international application of which it forms a part”, and is therefore not accepted after submission. It is, in any case, probably not best practice to fill out the declaration form at the time of filing the international application if you do not intend to submit it at the same time, as this may result in an incorrect page count.
The declaration can be signed either with an alphanumeric (text-string) signature1 or with a scanned facsimile signature or, if you make a printout, with a handwritten signature. Once the declaration is complete it can either be saved in PDF format, or printed out by clicking on the "Print Declarations" button, which becomes active when declarations are prepared after the submission of an international application. It can then be uploaded in PDF format via the Document Upload feature in ePCT.
Creating a post-filing declaration using the dedicated ePCT online Action
It is possible, provided that you have either eOwner or eEditor access rights to the international application in ePCT, to create a post-filing declaration based on the request form data by using the online Action “Declarations under Rule 4.17” under ePCT private services. If you submit the declaration in this way, there will be no need to manually input the required bibliographic data, including the IA number – this will be filled in automatically, based on the information that was included in the request form and including any subsequent updates which may have been processed for your application, and any print-out of the declaration would automatically include the IA number. If you assign temporary eEditor access rights to the inventors, they can sign the declaration either by typing a text-string signature or by attaching an image file (JPG or TIF format) containing a facsimile signature. The declaration would then be submitted to the IB in fully electronic format, and it would be instantly available in ePCT.
For further information on using the ePCT system, please go to:
With regards to the payment of fees for submitting declarations after the filing of the international application in general, no fee will be charged for that submission, and no extra page fee will be charged, even though it forms part of the international application.
For further information on the filing of declarations, see the PCT Applicant’s Guide, paragraphs 5.074 to 5.083.
Please note that the filing of a declaration of inventorship is optional during the international phase, as it is for of all other types of declaration under PCT Rule 4.17. Any of the declarations may be furnished upon entry into the national phase, and some applicants may wish to wait until national phase entry before the United States Patent and Trademark Office (USPTO) to fulfill the US requirement for an inventor’s oath or declaration. Furthermore, since the entry into force of the relevant provisions of the America Invents Act in September 2012, for international applications having an international filing date on or after 16 September 20122, in addition to an inventor’s oath or declaration, you can file with the USPTO in the national phase a substitute statement when one of the inventors is deceased, legally incapacitated, cannot be found or refuses to sign an oath/declaration, or you can file an assignment statement signed by the inventor(s) that combines the statements required for an oath/declaration with an assignment of the invention.
For information on the obligation by designated Office to accept any declaration under PCT Rule 4.17, see the “Practical Advice” published in PCT Newsletter No. 02/2014.
Date retrieved: 30 December 2018