What’s the Best Practice for 92bis changes?

One of many nice things about the PCT (Patent Cooperation Treaty) system is that you can do one-stop shopping for changes in the bibliographic data.  (In a somewhat similar way, the Madrid Protocol and Hague Agreement systems provide one-stop shopping for assignments and owner address changes.)  By filing a so-called Rule 92bis request, you can update the inventor list, the name of the applicant, and/or addresses and citizenships thereof.

When I say “one-stop shopping” I mean that you do the change once and it covers multiple countries or Offices around the world.  

But there are better and worse ways to carry out your 92bis request, and that’s the point of this blog posting.

To accomplish a 92bis change, it is necessary that the request reach the International Bureau of WIPO prior to the end of the 30-month period.  Which brings us to the least-good way to do a 92bis request.

Worst way to do a 92bis request.  The least-good way is to send the request somewhere other than the International Bureau of WIPO.  Many practitioners all around the world are somehow in the habit of sending their 92bis requests to their local Receiving Office.  This approach has many drawbacks, including that the RO might take some days or weeks to get around to transmitting the request to the IB.  Or might somehow fail to transmit the request to the IB.  Perhaps the most disappointing is those cases where the RO receives the request prior to the end of the 30 months but does not transmit the request to the IB until shortly after the end of the 30 months.  In such cases the IB has no choice but to mail out a letter stating that the 92bis request will not be entered.

When a 92bis request does not get entered, the consequence is that the applicant must incur the (likely not insubstantial) cost of paying local counsel in each designated Office so that local counsel can prepare and file papers aimed at the same result as the failed 92bis request.  Depending on the Office involved, this may require payment of government fees and rounding-up of signatures from multiple persons involved in the change.

Why does any practitioner send a 92bis request to the local RO?  Maybe just the comfort level that the practitioner knows how to send things to the practitioner’s local patent office.  They know how much postage to put on the envelope, they know which speed-dial button on the fax machine to use.  Or maybe it’s just “we’ve always done it that way”.  But the practical result is that the request might not reach the IB in time.  And even if it reaches the IB on time, it is not the Best Practice, as we will discuss below.

Working our way up in the ranking of worse or better ways to do a 92bis request, the next less-bad way is to fax or hand-carry or courier or mail the request to the IB.  This at least avoids possible delays in the Receiving Office.  But, like the RO approach, it has many drawbacks.  For one thing it requires the IB to figure out the correct application file into which to insert the document.  For another, it requires the IB to parse through a (possibly) randomly formatted letter to try to discern just what is to be changed.  A flyspeck on the fax printout might change a “p” into a “q”.  Many things could go wrong.

Regular readers of this blog can guess where I am going with this discussion.  Of course I urge the practitioner to use ePCT to submit the 92bis request.  But even within the world of ePCT there are worse and better ways to proceed.

The worst of the ePCT approaches for making a 92bis request is to use “public” ePCT, meaning the kind of ePCT that you can use even if you lack a WIPO cryptographic certificate.  In public ePCT there is a way to “upload” a random document into a random PCT application.  You click around to the upload function, you type in the application number of interest, you upload a PDF file, and you click “submit”.

The public upload approach has at least two important advantages over the old-fashioned ways.  One advantage is that the document gets inserted into the correct application file in an automatic way, with an automatic insertion of the document into the IB workflow for handling.  There is thus no risk that the document gets inserted by mistake into the wrong application file.  And someone within the IB gets this task added to his or her to-do list in an automatic way.

A second advantage of the public upload is that if it worked, it worked.  If you did the upload before the end of the 30-month period, then your filing will turn out to be timely.  None of this wondering whether your fax went through.  None of this wondering whether maybe two pages got stuck together when running through the fax machine.  None of this wondering whether the RO might take a week or two to get around to transmitting the document to the IB.

So now let’s turn to the Best Practice.  The Best Practice is to use the “private” ePCT and to submit the change as an “action”.  To use “private” ePCT, you need to have obtained a cryptographic certificate from WIPO.  And you need to have gained “access” to the particular PCT application in ePCT.  (It will come as no surprise to the reader that I urge each reader to obtain a WIPO cryptographic certificate if you have not already done so, and that I urge the reader to gain access in ePCT to all of his or her PCT applications, well in advance of the day when some urgent task such as a last-minute 92bis change arises.)

For the practitioner who is following the Best Practice, here is the sequence of steps:

1. Log in at private ePCT.
2. Bring up the particular PCT application of interest.
3. Click on “actions”.
4. Click on “92bis requests”.
5. Select the particular thing that you want to change.  If for example you are changing the mailing address for inventor Jones, then select inventor Jones.  Then select that the thing that you want to change about inventor Jones is the mailing address for inventor Jones.
6. The ePCT system will tell you what it now lists for the mailing address of inventor Jones, and will invite you to type in the new mailing address for inventor Jones.  Do so.
7. Click “submit”.

The alert reader will appreciate the many, many good things about this “actions” approach.  One good thing is that it saves the IB person from having to try to discern, from the (perhaps) random formatting of a word processor document, just what it is that is supposed to change.  With the “actions” approach, the specific proposed change is very clearly presented to the IB person.

Related to this is that if you have typed the address of Jones correctly into the “action”, you do not need to worry about the chance of an IB person typing it wrong (perhaps due to the flyspeck mentioned above).

The “action” will have been tied to the particular application of interest.  No need to worry about the task somehow getting inserted into the wrong application file.

The “action” will have reached the IB instantly.  No need to worry about mail delays or courier delays or RO delays.

The IB person can attend to the change extremely quickly and efficiently.  It is basically a matter of the IB person using one or two clicks of a mouse and the 92bis change will be instantly carried out.

Here’s the part that is not documented anywhere, but is important to know.  Within the IB, as between submissions made through ePCT and submissions made in other ways (such as mail or fax or sending to the RO), the IB people have an internal standard that they try to attend to the ePCT requests the very same day that they arrive, and in any event prior to the non-ePCT requests.  This means that the submissions made in other ways get pushed off until the ePCT requests have been attended to.

From this it is clear that the practitioner who wants to use a Best Practice for a 92bis change should use ePCT, and in particular should use the “actions” path within ePCT.  This will lead to the change being attended to most quickly, accurately, and efficiently.