FAQs on Procedures for Changing Bibliographic Data of PCT International Applications entering the Chinese National Phase

Patent Cooperation Treaty, abbreviated as PCT, which makes a single patent application filed in only one language at an international receiving office regarded as multiple patent applications filed at the same time in different PCT member states, is favored by more and more patent applicants. Applying for a PCT international patent application is cost-effective from both the perspective of the effectiveness of the PCT timeline and the perspective of affordability of PCT application fees. After a PCT application enters the national phase, it is the patent examination and approval authorities of various countries that will examine the application in accordance with respective laws and finally decide whether a patent right is to be granted. Based on our years of experiences in practicing Patent Law as patent attorneys, we sort out several commonly-asked questions related with the procedures for changing the bibliographic data of PCT international applications entering the Chinese national phase. We hope this article can be useful for your future applications to successfully pass the preliminary examination phase and enter the substantive examination procedure as early as possible.

Q1: When the applicant has changed his address before entering the Chinese national phase, whether the new address should be used in entry into the Chinese national phase?

In practice, many applicants may encounter the same situation. There is usually a period of time between the filing date of the international application and the date of entering the national phase. During the period, some applicant may change his registered address (when the applicant is an industrial or mining enterprise, a university or scientific research institution) or his habitual residence (when the applicant is an individual) due to a move or other reasons. Generally, the Patent Office of China does not require a detailed address to be recorded for PCT applications entering the national phase, that is, only the country and state (county) are registered. Therefore, if the applicant's detailed address, such as street, building, etc., has changed while the country and state (county) remain unchanged, only the country and state (county) need to be registered during the procedure of entering the national phase. If the country or state (county) in the applicant's address is changed, we usually advise the applicant to submit a request with the PCT/IB/306 form to the International Bureau for changing the applicant's address if there is enough time before the due date for entering the national phase, and to enter the Chinese national phase with the new address after receiving the "Notification of the Recording of a Change" (PCT/IB/306 form). In this approach, no change fee is incurred. If there is not enough time before the due date, the original address can still be used in the entry formalities and the address can be changed by filing a request for changing the bibliographic data after the notice of acceptance of PCT international application entering the Chinese national phase is received. In this approach, certain fees are incurred.

Q2: When and where to change the applicant is better after the filing of an international application?

Generally, if the change of the applicant has been recorded in the International Bureau and a "Notification of the Recording of a Change " (form PCT/IB/306) has been issued, the bibliographic data after the change should be used when the international application enters the Chinese national phase. That is, the assignee should serve as the applicant. Since the change is a change of entity, a certificate of transfer signed or sealed by both parties shall be submitted upon entering the national phase. If the change of the applicant has not been recorded in the International Bureau because it can avoid the official fees and service fees incurred by requesting the change after entering the national phase and it is easier and faster to record the change at the International Bureau than at the Patent Office of China. There is also a point for attention for the certificate documents: if the applicant wants to use the signed transfer agreement for bulk cases, extra attention should be paid to the abbreviation of the receiving office in the case list. If Hong Kong region or Taiwan region is involved, they should be correctly marked as “Hong Kong, China” and “Taiwan, China”, or the document will not be accepted by the China Patent Office and a new signed transfer agreement is required.

Q3: The inventor's name is misspelled in the published PCT international application, and the inventor wants to make corrections. What's the procedure for changing such bibliographic data?

In such case, we generally advise the inventor to submit a request for a change to the International Bureau and enter the Chinese national phase with the corrected inventor's name after a "Notification of the Recording of a Change" (form PCT/IB/306) is issued by the International Bureau. If the application has completed the procedures for entering the national phase, we generally advise the inventor to request the change at the International Bureau without making the change at the Patent Office of China unless the inventor has special reasons. Because the Patent Office of China simply records but not publishes the English name of the inventor for the patent application, and only the inventor's Chinese name is used in the patent certificate after a patent is granted in China, we may advise the inventor not to request for the change without special reasons. If there is the need for correction, the inventor can request for changing the bibliographic data with the Patent Office of China, in which case only a request for changing the bibliographic data is required to be submitted with the change fee paid, and no supporting document is required. After the change is completed, the Patent Office of China will not issue a "Notice of Passing Examination on Formalities", but will inform the applicant of the change in the form of an "Examinationspecific Letter" and put the change on record.

Q4: Under what circumstances should the Certificate of Assignment of Right of Priority be submitted for a PCT international application?

In general, for a PCT international application claiming the benefit of a prior application (mostly US prior applications in practice), when the international search report involves documents labelled with "PX" or "PY" and the applicant of the subsequent application is inconsistent with the applicant recorded in the copy of the prior application document, the applicant is advised to voluntarily submit the Certificate of Assignment of Right of Priority signed or sealed by all applicants of the prior application. If the Certificate of Assignment of Right of Priority is not submitted at the time of entering the national phase, the Patent Office of China will issue a "Notice to Make Rectification", and the applicant can submit the documents within the prescribed time limit.

In summary, we briefly discussed several frequently asked questions regarding the change of bibliographic data during entry into the national phase of China of PCT international applications. The key take-away is: when the applicant(s) or the inventor(s) of a PCT application is changed, it is advantageous to request for the change at the International Bureau if the PCT application has not gone through the formalities for entering the national phase. By doing so, the follow-up procedures can be simplified with reduced costs.