Effective strategies for changes in PCT applications during the international phase

In a globalized business environment, company acquisitions and name changes are increasingly common. Properly documenting these changes is a critical aspect of patent management. Regarding documenting changes under Patent Cooperation Treaty (PCT) Rule 92bis, Beijing Yezhima offers the following expert insights to help you navigate these changes smoothly.

• My company, the applicant for a PCT application, recently acquired another company and is now operating under a new name. I would like to request that the International Bureau (IB) record this change. Should I choose "change of name" or "change of person"? What documents do I need to provide?
  • The choice between "Change of Personnel" and "Change of Name" depends on the applicable national law, generally the law of the company's place of incorporation. Generally, if a transfer of rights or merger results in the establishment of a new legal entity and this is noted in the commercial register, this is considered a change of person . If the change of person involves a new name, selecting "Change of Personnel" implicitly includes the name change, and no separate request is required.

In ePCT, you must select "Action" to record the change under PCT Rule 92bis and select the correct option. As long as all other requirements are met, the IB will record the selected option, which will be reflected in PCT/IB/306. While the incorrect indication will have no impact on the processing of the application during the international phase, you will need to prove the change upon subsequent entry into the national phase, and official fees and service charges will apply.

If a request for a change under PCT Rule 92bis is made by an agent, it is sufficient for the agent to sign the request for change and IB will not conduct further verification or require evidence of the change.

However, if the requested change involves the addition of a new applicant, the IB will require evidence supporting the change. This typically involves an enabling document such as a transfer statement, but it can also be an extract from the commercial register. Any documents submitted to the IB will be publicly accessible on PATENTSCOPE, so it is recommended that commercially sensitive information be concealed. If the new applicant is represented by a new agent and that agent requests the recording of the change, the new agent must also provide a letter of authorization from the new applicant.

The time limit for requesting a change is 30 months from the priority date. It's important to note that this 30-month period refers to the date the IB receives the change request, not the receiving Office (RO). Therefore, the IB must receive the change request no later than 11:59 a.m. (Geneva time) on the last day of the 30-month period. Therefore, applicants are advised to send change requests directly to the IB via ePCT Actions, rather than to the RO.

If the IB receives the request within the 30-month period, it will issue a notification of change, Form PCT/IB/306. Receipt of Form PCT/IB/306 confirms that the IB has timely received the change request. The IB will notify all Dos of the change. The change will also be reflected in PATENTSCOPE and accessible in ePCT for national offices using that system. There is no official fee for the IB to record the change.

If the IB does not receive the change request within the 30-month period, it will inform the applicant/agent that the change cannot be recorded in the international phase and that a separate change request must be filed at each national office in accordance with national procedures. At this time, official fees and service fees for the change may be incurred.