Change
Principle
Upon request by the applicant, it is possible to request the recording of changes relating to (R92bis.1.a PCT):
- the applicant (R92bis.1.a.i PCT),
- the representative (R92bis.1.a.ii PCT),
- the common representative (R92bis.1.a.ii PCT), or
- the inventor (R92bis.1.a.ii PCT).
New Applicant
When the change concerns a new applicant (e.g., assignment), it is not necessary for this new applicant to be domiciled or a national of a contracting state (applicant’s guide §11.019).
However, the domicile or nationality of the new applicant may be relevant for the filing of a request for international preliminary examination (see International Preliminary Examination). It is indeed necessary that one of the applicants (A31.2.a PCT and R54.2 PCT) at the date of filing the request for examination (e.g., assignment recorded by the IB, R92bis.1.a.i PCT):
- be domiciled in one of the contracting states bound by Chapter II; or
- be a national of one of the contracting states bound by Chapter II.
Special Case of Inventor-Applicants for the US
For the United States, and for applications filed before September 16, 2012, inventors had to be designated as applicants for the purposes of the US procedure and this throughout the international procedure, until entry into the national phase (Applicant’s Guide, National Chapter, US, point US.02).
It is not possible to record a new applicant for the US, because if an application does not list the inventors as applicants, only assignments for the national phase may be recorded.
Procedure
Time Limit
The IB may record the change of applicant if it receives a request for recording before the expiration of a 30-month period from the priority date (R92bis.1.b PCT), regardless of the time limit for entry into the national phase in the various states.
Official Fee
This recording is free of charge (applicant’s guide §11.018).
Form of the Request
The request for recording the change must be made in writing (applicant’s guide §11.020) and may be sent (R92bis.1.a PCT):
- to the RO (which will transmit it to the IB); or
- to the IB.
However, the date to be taken into account for the above time limit is the actual receipt by the IB.
If the change concerns several applications, it is possible to group this request in a single request. However, the list of applications must be explicitly mentioned (PCT Newsletter No. 5/2007), and a generic mention such as all applications of applicant XXX is not sufficient.
Evidence of the Change
Change Originating from the Applicant
If the request for change originates from the applicant or their representative, no evidence of the assignment is required (applicant’s guide §11.018).
Assignment deeds and other documents relating to the right to file an application may nevertheless be requested during the national phase.
Change Originating from a Third Party
If the request for change does not originate from the applicant or their representative, a copy of the assignment deed or any other document proving the assignment must be submitted with the request (PCT Newsletter 06/2002 and applicant’s guide §11.021).
Furthermore, if the request originates from the representative of the new applicant, a power of attorney signed by the new applicant must be filed at the same time (R90.4.a PCT) and designating the new representative.
Notification of the Change
Upon request, the IB may also notify this change to all designated offices and interested PCT authorities (Administrative Instructions 422.a).
Legal Effects
The legal effects may vary from one office to another (applicant’s guide §11.020).