[Pct] Applicant of Convenience Question

[Michael Johnson]

Hi Scott, I have a similar situation - applicant/inventors are all European.

In the past, I used a work-around with a US sub of the European applicant,
which was a PITA for both me and my client, but we've now switched to AOC
for current filings.

In removing the AOC from the Applicant list, I believe nothing should
happen to your status as agent (apart from losing access to the e-record
through WIPO for a period of time, which I'm waiting to clear right now). I
filed a 92bis change request last week and should soon have access to the
record again.

I'm not sure that I understand your second question - my understanding is
that if you are a non-agent correspondent then the Applicant must sign the
request. If you have authority to act on behalf of the applicant as the
agent, you can sign on behalf of the client, or the applicant can sign for
itself as well as for a correspondence. Personally, it can be challenging
to get the client to engage in ... meaningful timeframes, and I fear that
if I pushed e-sign requirements on to them (not mention even getting
access), many weeks would pass without any movement. You may have have
clients with more responsive stakeholders....

I haven't filed for an applicant merely as correspondent, so I'm not sure
about what that path entails.

Michael

On Mon, May 20, 2024 at 6:04 PM Scott Nielson via Pct <
pct at oppedahl-lists.com> wrote:

> Situation: the main applicant is a European entity and the inventors are
> also in Europe. I understand that I can list an applicant of convenience
> (AOC) and sign the PCT request as the agent. Getting signatures from the
> applicant is difficult (yes, I know ePCT makes it easy, but assume this is
> not an option).
>
> Question: what happens to my status as agent when the AOC is removed via a
> rule 92bis request? Can I still be the agent? I could not find an answer in
> the PCT Applicant's Guide
>
> Alternative procedure—sign on behalf of the applicant. The PCT Applicant's
> Guide says that I can list myself as the correspondence address for the
> application (Section 5.051). The PCT Applicant's Guide also envisions the
> possibility that the person who signs the request can be the same as the
> person who is listed for the correspondence address (Section 5.047). In
> this case, the person who signs for the applicant is technically not the
> "Agent" within the meaning of the PCT, but is able to sign on behalf of the
> applicant and receive all correspondence related to the application.
>
> This seems much easier than the AOC procedure. I've already read the
> experience of at least one person who does this regularly, although this
> person adds "for and on behalf of the Applicant" in the signature when
> signing for the applicant.
>
> Does anyone have an answer to the question I posed and/or thoughts about
> the alternative procedure? I'm leaning towards going with the alternative
> procedure, but I'm open to thoughts.
>
> *Scott Nielson*
>
> 801-660-4400
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> Pct at oppedahl-lists.com
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>
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