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:  When I file PCT applications on behalf of my clients, I usually provide my e-mail address and mark the applicable check-box to authorize the International Bureau and any other Offices/Authorities under the PCT to send notifications relating thereto by e-mail. Our firm would like to operate as far as possible in a paperless environment and avoid the drawbacks of postal delays.

Recently I took over as agent for a series of PCT applications and submitted the required powers of attorney. However, I noticed that I am now receiving correspondence from the International Bureau for those applications in paper form only. Is there any way to change the delivery method so that I will receive notifications by e-mail for the applications for which I am the new agent?    

A:  When submitting a request for the recording of a change of agent, common representative or address for correspondence under PCT Rule 92bis, it is important to specify whether the International Bureau (IB) and any other Offices/Authorities are authorized to send notifications by e-mail to a given e-mail address, and to indicate whether you wish the notifications to be sent by e-mail as advance copies only, followed by a formal paper copy, or whether you wish them to be sent exclusively in electronic form.  If you do not give such authorization, the default solution will apply, that is, you will receive the notifications in paper form only; any e-mail address supplied will be used only for informal communication but not for sending notifications concerning a specific application.

To rectify the situation, you may now subsequently submit a new request under PCT Rule 92bis, requesting that a given e-mail address be recorded for the delivery of all notifications exclusively in electronic form.  There is no specific form to make such a request and you can simply state it in a letter.  Alternatively, if you use the ePCT online ‘action’ to submit requests under PCT Rule 92bis, requesting such a change will involve only a few clicks and will result in a standardized automated form being submitted to the IB in real-time. Moreover, no retyping of the data will be required by the IB, thus avoiding any transcription errors in particular in the e-mail address.

Please note that, to date, only the IB and a few other Offices send such notifications by e-mail. Details of which Offices send notifications by e-mail are available in Annex B of the PCT Applicant’s Guide.

It is also important to note the following:

• if you request notifications by e-mail only, it is your responsibility to keep any e-mail address details up-to-date and to ensure that incoming e-mails are not blocked for any reason on your side.
• correspondence intended for the applicant, be it in paper or electronic form, will always be sent to only one address. Where an e-mail address has been provided both in respect of the applicant and in respect of the agent, the IB will send e-mail communications only to the appointed agent (Section 108 of the Administrative Instructions under the PCT).
• e-mails may be sent to the IB for any informal queries which are not related to the processing of specific international applications. As yet, only a few Offices have informed the IB that they would accept the submission of documents by e-mail in accordance with PCT Rule 92.4(h). For electronic communication with the IB it is recommended to use the ePCT system, either by uploading PDF documents, or by using the many ePCT online ‘actions’ that allow direct action on your application to be requested in a number of scenarios, including requests under Rule 92bis. For more information on using the ePCT system, please see the “Practical Advice” section in PCT Newsletter 01/2016 at:

https://www.wipo.int/pct/en/newslett/practical_advice/pa_012016.html

For further information on indicating e-mail addresses, see the PCT Applicant’s Guide, International Phase, paragraphs 5.029, 5.050, 8.017, 8.021, 10.018A and 10.021A, and on recording an e-mail address for multiple applications, see the “Practical Advice” section in PCT Newsletter No. 07-08/2010 at:

https://www.wipo.int/pct/en/newslett/practical_advice/pa_072010.html