[Pct] Use of 4.17 declarations

[James E. Lake]

Choose a qualified foreign associate and trust their advice. If you wish, ask them why your Rule 4.17 declaration is defective. Execution requirements vary widely by country.

My experience has been that some countries are not parties to the Hague Convention on Apostilles https://www.hcch.net/en/instruments/conventions/specialised-sections/apostille or otherwise require an original, notarized copy. In such case, I expect your 4.17 would have to comply with those local rules and you would need a separate original for each country that requires one.

Also, in case Singapore is your country, it has a reservation for Rule 51bis https://www.wipo.int/pct/en/texts/reservations/res_incomp.html.

James Lake

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Pct
Sent: Monday, November 27, 2023 1:28 PM
To: Timothy Snowden via Pct <pct at oppedahl-lists.com>
Cc: Timothy Snowden <timothy at thompsonpatentlaw.com>
Subject: Re: [Pct] Use of 4.17 declarations


[External Email]

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 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?





-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20231127/cdfcf170/attachment.htm>