[Pct] Applicant of Convenience Question

Tue May 21 16:02:21 EDT 2024

The relevant section is 5.042 of the Applicant's Guide, which states:
5.042. Who may be appointed to act as an agent?
Article 49, Rule 83.1bis, Section 106
Any person who can act as an agent before the Office which acts as receiving Office (refer to Annex C) may be appointed as an agent for any international application filed with that Office. Where the international application is filed with the International Bureau as receiving Office, any person who has the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the applicant (or, if there are two or more applicants, any of the applicants) is a resident or national may be appointed as agent (refer to Annex C). An appointed agent who has the right to represent the applicant before the receiving Office is automatically also entitled to act before the International Bureau, the International Searching Authority and the International Preliminary Examining Authority.
I can only act as a capital "A" Agent if the PCT application can be filed with RO/US—i.e., if RO/US is a competent receiving office. In my case, the applicant is European so RO/US is not a competent receiving office. Hence the resort to an AOC or listing myself as a non-agent correspondent (and also signing the request form "for and on behalf of the applicant" as a lowercase "a" agent meaning I'm acting on behalf of the applicant, but I'm not recognized as an official "Agent" under the PCT).

Scott Nielson

801-660-4400

________________________________
From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Tuesday, May 21, 2024 1:23 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Pct] Applicant of Convenience Question

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<mailto: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<mailto:pct-bounces at oppedahl-lists.com>> on behalf of Michael Johnson via Pct <pct at oppedahl-lists.com<mailto: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<mailto:pct at oppedahl-lists.com>>
Cc: Michael Johnson <mjohnson at synergypatents.com<mailto: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<mailto: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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