"The limitation to one applicant on any PCT e-filing receipt is nothing new. Such limited e-filing receipts have been issued by PCT receiving Offices for nearly 10 years in the context of filings using PCT-SAFE (or epoline or other equivalent filing software). The receipts for ePCT filings are created by exactly the same process in the same servers. Nevertheless, we would hate to be the cause of readily avoidable palpitations [Bravo, exclaims Merpel] and are happy to look into whether it would be desirable to change the current practice.
The practice was originally set up based on Section 105 of the PCT Administrative Instructions, which sets out the normal arrangement used for indicating applicants on PCT Forms ever since 1978:
“Where any international application indicates two or more applicants, it shall be sufficient, for the purpose of identifying that application, to indicate, in any Form or correspondence relating to such application, the name of the applicant first named in the request. The provisions of the first sentence of this Section do not apply to the demand.”
That limitation to listing a single applicant is a permission, not a requirement. At least as far as Section 105 is concerned, the filing receipt could be extended to show all the applicants. But would that have been desirable at the time when its form was fixed?
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WIPO staff constantly monitor
the IP blogosphere for signs
of user palpitations ... |
The filing receipt is intended merely as a practical proof of the fact that something had happened, not as an explanation of the detail of the international application. Listing the first applicant is a useful indicator that you’re looking at the correct document. Listing all of the applicants may take up a lot of space and make the document as a whole more difficult to read. At a time when almost all international applications had multiple inventor-applicants for the United States (in some cases in enormous numbers) in addition to the corporate applicant(s) for the rest of the world, this would have been a serious concern, quite apart from the automatic reaction of continuing the long-standing default practice with respect to forms.
Of course, things have changed. With the America Invents Act, it is becoming less necessary to include multiple inventor-applicants who will sign (or may already have signed) over any rights before a US grant occurs. So we’re happy to review this policy to see whether it can and should be fixed, but it’s not a clear-cut matter that it is desirable to everyone. And if it is somehow now essential for electronically filed international applications, what about paper applications, which by their nature leave the agent with less evidence of what they have filed?
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WIPO staff are trained from an early
age not to deviate lightly from
generally accepted standards |
In fact, even if all applicants would welcome a change, it’s not a trivial matter. The filing receipt is part of a standard which has been agreed internationally and implemented in the servers of more than 20 Offices in addition to the International Bureau (IB). Technically, we could probably change our own receipts relatively easily, but only by becoming non-compliant with the standard – not only in the visual representation which Mr Netter refers to, but in the underlying machine-readable information which it is generated from. Deviation from the standard is not something which we would do lightly since it is hard to be certain what might adversely affect processing (and consequently the applicant) further down the line. The standard could be changed, but it will take time and it’s not really clear whether it is sufficiently desirable that it would be agreed and implemented.
But even in the meantime, things are nowhere near as bleak as Mr Netter implies.
Although the filing receipt does not list the names of all the applicants, it does state the total number, so nobody should be under any illusion that the listed applicant is the only one [oh, says Merpel, I never thought of that ...].
Moreover, in the context of either an ePCT or a PCT-SAFE filing, the filer always has access to a copy of the request as it was transmitted, which lists all of the applicants and can be shown to anyone concerned. If the partner applicants can’t take your word that this is accurate, then the cooperation between them is probably already in trouble. Nevertheless, ePCT takes this further and allows the applicant also to download the request form from the IB’s file as soon as it has been received there - within a few minutes in the case of a filing to RO/IB) [RO? Merpel thinks it means "receiving office": any other offers?]. And if you need really solid evidence, you can download a digitally signed copy of the request with certification of its status as soon as the IB has processed it.
We’re also replying directly to Mr Netter, but we always welcome suggestions for improvements to our online services to epct@wipo.int (directly or through the form on our website) or to our PCT services more generally to pctbdd@wipo.int. If any of your readers wish to confirm that this is an essential feature – or tell us that it’s really not – they may feel free to do so".
