[Pct] Use of 4.17 declarations

[Margaret Polson]

It is also possible that foreign counsel did not check to see if those declarations were filed.   From time to time, we have forgotten to check before we send US declarations for signature by the inventors to instructing counsel.



From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Pct
Sent: Monday, November 27, 2023 2:20 PM
To: Carl Oppedahl via Pct <pct at oppedahl-lists.com>
Cc: Timothy Snowden <timothy at thompsonpatentlaw.com>
Subject: Re: [Pct] Use of 4.17 declarations


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 in Rule 51bis.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 51bis.2<https://www.wipo.int/pct/en/texts/rules/r51bis.html#_51bis_2>, the national law applicable by the designated Office may, in accordance with Article 27<https://www.wipo.int/pct/en/texts/articles/a27.html>, require the applicant to furnish, in particular: ..."
Rule 51.bis.2 states "


51bis.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 51bis.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 with Rule 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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