[Pct] Applicant of Convenience Question

Tue May 21 15:23:46 EDT 2024

 That was my question -- obviously you wouldn't be filing it at all without
the client's authorization (even if you don't yet have a signed Power of
Attorney).   Why would you not sign as "agent" as a matter of course?  My
usual approach to practicing law is to de-hassle the client as much as
possible.  Why require the client to sign a PCT Request?

In the Treaty itself, there's no definition of who can and can't be "agent".

In the Regulations, Rule 90 is the main rule about "agent."   I don't see
anything there (or in any of the other Rules) that scares me about signing
as "agent."

So my question -- why the hesitancy to sign as "agent?"  (This isn't a
trademark where signing puts you at some liability.)  Am I missing
something?

On Tue, May 21, 2024 at 1:02 PM Scott Nielson via Pct <
pct at oppedahl-lists.com> wrote:

> Thanks Damon and Michael for confirming that removing the AOC will not
> change the status of the agent.
>
> 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.
>
> In the second situation, you are correct that I would be a non-agent
> correspondent, which means the applicant must sign the request. However, if
> the applicant authorizes me to sign the request on behalf of the applicant,
> then I can just do that instead of sending it off to the client to sign it.
> This seems like a simpler solution than filing with an AOC.
>
> *Scott Nielson*
>
> 801-660-4400
>
> ------------------------------
> *From:* Pct <pct-bounces at oppedahl-lists.com> on behalf of Michael Johnson
> via Pct <pct at oppedahl-lists.com>
> *Sent:* Tuesday, May 21, 2024 10:00 AM
> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice. <pct at oppedahl-lists.com>
> *Cc:* Michael Johnson <mjohnson at synergypatents.com>
> *Subject:* Re: [Pct] Applicant of Convenience Question
>
> 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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