[Pct] Use of 4.17 declarations

[Timothy Snowden]

In India, for example, this has been successfully tested apparently: 
Patents - Declaration under PCT Regulation 4.17(ii) is sufficient for 
‘proof of right’ - Lexology 
<https://www.lexology.com/library/detail.aspx?g=6209b0dd-ca39-4a34-9d06-88ac115f4cd8>


On 11/27/2023 3:19 PM, Timothy Snowden via Pct wrote:
>
> 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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