It’s a few weeks before the 30 month deadline for national stage entry of one of your client’s PCT applications. The client calls you and tells you one (or more) of the following:
- The sole inventor has just assigned her rights to a company
- The corporate applicant’s address changed a couple of months ago
- One of the inventors currently recorded against the PCT application was listed by mistake and needs to be deleted
- The wrong serial number is recorded for the priority document (it was correct on the Request)
- The inventors are listed as co-applicants with the corporate assignee for all countries, when they should only be applicants for the USA
Is it worth recording any of these changes at this late stage?
It’s rare I’m asked a question in the patent field that I feel so comfortable answering with a one word answer: YES!
In many countries, if this sort of information is updated during the international stage of the PCT, you won’t need to do or submit anything else during the national stage to complete the correction. That means you’ll save yourself (or your client) the cost and effort of recording changes in individual countries and regions. These costs can be substantial if there are lots of countries involved.
Also, in some countries, making these sorts of changes is considerably more difficult than making them during the international phase.
WHAT PROOF IS NEEDED?
To make the change during the international phase, you don’t need to supply documentation or any other type of evidence. In contrast, many countries will at least want to see copies – and maybe certified copies – of documents supporting these types of changes if you try to make them after national phase entry.
Even in countries where evidence needs to be provided at or after national stage entry to support changes made during the international phase, having recorded the change beforehand will nearly always reduce the costs to some extent.
WHO TO CONTACT
Applicants and their authorised representatives can certainly make changes like these via their local receiving office (i.e., the patent office with which the PCT application was originally filed). However, to speed things up and reduce the chance of transmission delays or errors, in my opinion you’re better going straight to the source and correcting the information directly with WIPO.
You can find the contact details of the team handling a particular application by searching on the PCT application number at the following page: http://www.wipo.int/pctdb/en/iateamlookup.jsp
You have until the 30 month deadline to ask WIPO to make changes to PCT bibliographic information. Even if WIPO doesn’t have time to send confirmation of the change to the applicant or their attorney until after the 30 month deadline has passed, the new data will still filter through to the relevant patent offices after national stage entry.
ANY OTHER TIPS?
When instructing foreign associates to enter the national stage, be sure to give them a clear picture of any changes that were made during the international stage of the PCT procedure.
If the form from WIPO confirming that the change has been recorded (Form PCT/IB/306) has been received, provide a copy to the associate with your instructions.
Alternatively, if the change has been requested but not yet formally recorded by WIPO, it’s important you explain this to the associate with your instructions to minimise confusion.
If you need help on this topic, you can contact WIPO directly or the PCT help desk at your local patent office for more information.
Alternatively, feel free to call us or drop us an email and we’d be happy to help you in any way we can.