Note: For all requests for examination of standard patents filed from 15 April 2013 (from 23 March 2013 for requests filed through eServices and B2B), a statement of entitlement to grant and to claim priority must be included in the request.

COG will check for compliance and take any appropriate action. This can include treating the request as not having been filed or directing that the request be rectified. COG will not object where the request indicates that a valid notice of entitlement is already on file or PCT Rule 4.17(ii) and (iii) declarations have been made.

General

A notice of entitlement must be filed either as part of the request for examination or otherwise, unless the applicant has included in its PCT Request the necessary declarations under Rule 4.17(ii) and/or Rule 4.17(iii) which designate Australia. Rule 4.17(ii) declarations relate to the applicant’s entitlement to be granted a patent. Rule 4.17(iii) declarations relate to the applicant’s entitlement to claim priority from an earlier application.

Where Rule 4.17 declarations have been made, this will be indicated on the front page of the pamphlet and also in the IASR/IASF. They may also be referred to in a request for examination filed on or after 15 April 2013. Examples of declarations are provided in 2.20 Annex C - Declaration Under Rule 4.17. For applications published from 1 April 2006, Australia is automatically designated for any declaration. For applications published before 1 April 2006, Australia is designated if the declaration refers to ‘AU’ or ‘all designations’.

Examination Practice

No Notice of Entitlement and No Rule 4.17 Declarations

Where there is no notice of entitlement and no Rule 4.17 declarations on file, an objection should be raised during examination (see, for example, PERP code [B3]).

Note: An objection is not necessary if a statement of entitlement is implicit from other documents on the PAMS case file, for example, where the inventor is also the applicant. Note that documents on Patentscope are not part of the PAMS file and therefore an objection will still apply if the relevant facts are only apparent from Patentscope.

No Notice of Entitlement and Rule 4.17 Declarations on File

Where there is no notice of entitlement on file and there is a deficiency in the Rule 4.17 declaration(s), examiners should include an objection that the entitlement of the applicant is not clear and explain why. It is not sufficient to merely object that there is no notice of entitlement on file.

In practice:

If no priority is claimed and a declaration under Rule 4.17(ii) nominating Australia is present, then the notice of entitlement requirements are met.
If priority is claimed:

a. If declarations under Rule 4.17(ii) and Rule 4.17(iii) nominating Australia are both present, then the notice of entitlement requirements are met.

b. If a declaration under Rule 4.17(ii) nominating Australia is present, but a declaration under Rule 4.17(iii) is not present, then a statement of entitlement to claim priority is required.

For example, if there is a US basic and the applicant in the PCT application is not the inventor (i.e. it is a company that is the assignee of the basic applicant), the applicant will need to establish entitlement to claim priority. This can be done by a declaration under Rule 4.17(iii). If there is no declaration under Rule 4.17(iii), an objection should be taken that the applicant has not stated its entitlement to claim priority from the basic document.

The objection can simply state:

“There is no notice of entitlement to claim priority from the earlier application(s).”

Name of Inventor(s)

If the name of the inventor(s) is not included in the PCT Request or another document on file, and a declaration under Rule 4.17(i) (relating to the identity of the inventor) has not been made, an objection should be raised that the entitlement of the applicant is not clear.

Copy of Declaration

It is not necessary for a copy of the declaration to be on the file and declarations will not routinely be placed on file. However, if circumstances arise where it is necessary to have a copy of the declaration, examiners should check whether the declaration is available from Patentscope. If the declaration is present, a copy should be downloaded and attached to the case file. If the declaration is not available, a copy may be ordered from the IB through COG.

Rule 92bis Changes

Where the applicant has made the necessary Rule 4.17 declarations and the person, name, residence, nationality or address of the applicant has changed during the international phase (under Rule 92bis), a new notice of entitlement is required, unless the change of name was supported by appropriate documentary evidence establishing the authority of the person making the request (noting sections 422 and 422bis of the PCT Administrative Instructions and paragraphs 310 and 311 of the PCT Receiving Office Guidelines). This practice is analogous to that outlined in 2.6.4 Changing the Applicant or Nominated Person.