[Pct] Use of 4.17 declarations

[Timothy Snowden]

Rule 4.17 states that "

The request may, for the purposes of the national law applicable in one 
or more designated States, contain one or more of the following 
declarations, worded as prescribed by the Administrative Instructions: ...

(iii)  a declaration as to the applicant’s entitlement, as at the 
international filing date, to claim priority of the earlier application, 
as referred to inRule 51/bis/.1(a)(iii) 
<https://www.wipo.int/pct/en/texts/rules/r51bis.html#_51bis_1_a_iii>;"


Going to Rule 51.bis.1(a)(iii) reveals (underlining added for emphasis) 
that "(a) _Subject to_Rule 51/bis/.2 
<https://www.wipo.int/pct/en/texts/rules/r51bis.html#_51bis_2>, the 
national law applicable by the designated Office may, in accordance 
withArticle 27 <https://www.wipo.int/pct/en/texts/articles/a27.html>, 
require the applicant to furnish, in particular: ..."

Rule 51.bis.2 states "

51/bis/.2 /Certain Circumstances in Which Documents or Evidence May Not 
Be Required/

The designated Office shall not, unless it may reasonably doubt the 
veracity of the indications or declaration concerned, require any 
document or evidence: ...

(ii) relating to the applicant’s entitlement, as at the international 
filing date, to apply for and be granted a patent (Rule 51/bis/.1(a)(ii) 
<https://www.wipo.int/pct/en/texts/rules/r51bis.html#_51bis_1_a_ii>), if 
a declaration as to that matter, in accordance withRule 4.17(ii) 
<https://www.wipo.int/pct/en/texts/rules/r4.html#_4_17_ii>, is contained 
in the request or is submitted directly to the designated Office;"


To respond, I would think you could politely point the patent office of 
interest back to your Declaration (they may not have paid attention to 
them), and note that these documents were provided under Rule 
51.bis.1(a)(iii), and that no request has been received from the Office 
under Rule 51.bis.2, and so the requirements are satisfied.


On 11/27/2023 1:03 PM, Carl Oppedahl via Pct wrote:

> A listserv member asks to post anonymously ...
>
> We filed PCT Rule 4.17 declarations in our PCT regarding the 
> Applicant’s entitlement to claim priority and to apply for and be 
> granted a patent in the international application.
>
> Now we are filing national phase applications in some countries that 
> are requesting Deed of Assignment documents to be notarized and/or 
> legalized.
>
> Wasn’t the point of filing the Declarations in the PCT to avoid having 
> to jump through these hoops in the national phase? What is the proper 
> response to a request for these documents?
>
>
>
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