[Pct] Pct Digest, Vol 7, Issue 5

[Damon Neagle]

Scott:

The International Bureau will still recognize you as being a competent agent to represent the Applicant after the 92bis request for record change to remove the AOC.  The IB only looks at the Applicant at the time of submission of the Request when determining competency of the agent throughout the international phase.

We researched this issue a few years ago because we had the exact same situation with one of our clients.  There is an opinion letter from the IB that is on point.  We found it after contacting the IB directly and asking for guidance.  If you want the link, connect with me off-list and I'll track it down.



Damon A. Neagle


Design IP A Professional Corporation

1575 Pond Road, Suite 201 | Allentown, PA 18104 USA

direct:  610.395.8005 | main: 610.395.4900 | web:  www.designip.com<http://www.designip.com/>

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Today's Topics:

   1. Applicant of Convenience Question (Scott Nielson)


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Message: 1
Date: Tue, 21 May 2024 00:02:47 +0000
From: Scott Nielson <scnielson at outlook.com>
To: "Oppedahl List [PCT]" <pct at oppedahl-lists.com>
Subject: [Pct] Applicant of Convenience Question
Message-ID:
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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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