PA 12/2016: Furnishing of assignment documents where there is a change of applicant

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:  With reference to the Practical Advice that was published in PCT Newsletter No. 11/2016 regarding the assignment of an applicant’s rights to another company after the international filing date but before entry into the national phase, would it be necessary to furnish the assignment document when requesting the International Bureau to record the change of applicant under PCT Rule 92bis?

A:  If the request for recording the change of applicant under PCT Rule 92bis is made by the agent of record, a power of attorney in favor of the agent of record and signed by the new applicant would be required, although the change would be recorded even if the power of attorney had not yet been furnished.  No further evidence of the change, for example an assignment document, is usually required by the International Bureau (IB) in these circumstances. 

Note, however, that if a request for recording a change of applicant is made by a new agent who is not yet named in the request, in order for the change of applicant and change of agent to be recorded, a copy of an assignment (that is, the written consent of the applicant of record for the change of applicant) or other documentary evidence supporting the change of applicant must be filed with that request, together with a power of attorney appointing the new agent and signed by the new applicant.  The change would not be recorded until those papers had been received.

Even though an assignment or other documentation by means of which the change of applicant was effected may not be required by the IB in the first situation, above, designated (or elected) Offices are entitled under PCT Rule 51bis to require, upon entry into the national phase, or within a time limit fixed by the designated Office concerned after national phase entry, additional evidence or documents in the national phase regarding any change requested during the international phase, such as proof of ownership and transfer of ownership of the application.  It may therefore be in the interest of the applicant to submit a copy of an assignment to the IB along with the PCT Rule 92bis request anyway.  The assignment document would then be included in the file of the international application and the designated Offices (and any other person) would have access to it on PATENTSCOPE, provided that the application had been published. 

For information on which Offices would require a copy of an assignment or any other evidence, please see the Summary of each National Chapter of the PCT Applicant’s Guide, which lists the special requirements, if any, which must be complied with in connection with entry into the national phase. 

Note that if the rights to an invention are assigned to another applicant before or on the international filing date, most Offices will accept a declaration as to the applicant’s entitlement to apply for and be granted a patent under PCT Rule 4.17(ii), instead of a copy of an assignment.  It is recalled, however, that such a declaration may not be submitted in respect of a change which occurs after the international filing date. 

Please note that requests for recording of changes under PCT Rule 92bis must be received by the IB before the expiration of 30 months from the priority date.  After the expiration of that time limit, any recording of a change would need to be requested direct with the relevant designated (or elected) Offices under the applicable national procedures.

It is recalled that PCT Rule 92bis requests are preferably submitted directly to the IB and by using ePCT.

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PCT Implementing Rules