Legal framework
Under Rule 90.4(b) PCT, a separate power of attorney is in principle to be submitted when an agent is appointed. However, Rule 90.4(d) PCT allows receiving Offices, International Searching Authorities, International Preliminary Examining Authorities and the International Bureau to waive the requirement that a separate power of attorney be submitted.
This waiver is subject to an important exception. Under Rule 90.4(e) PCT, where an agent or common representative submits a notice of withdrawal under Rules 90bis.1 to 90bis.4 PCT, the requirement for a separate power of attorney must not be waived.
The EPO PCT Guidelines confirm this for withdrawals: a notice of withdrawal may be signed by the applicant or by a duly appointed agent or common representative, but if the agent or common representative has not yet been duly appointed, a power of attorney signed by all applicants must be submitted, and the requirement is not waived in such cases.
For the EPO acting as International Preliminary Examining Authority, the WIPO PCT Applicant’s Guide states that the EPO has waived the requirement that a separate power of attorney be submitted. The same Guide also confirms that this waiver does not apply to notices of withdrawal.
Statement a)
Statement a) is false.
The statement says that for both action I and action II a power of attorney signed by each applicant is always required.
That is too broad. For action I, withdrawal of the international application, the waiver of the power-of-attorney requirement is excluded by Rule 90.4(e) PCT. However, for action II, filing a demand for international preliminary examination before the EPO as IPEA, the EPO has waived the requirement that a separate power of attorney be submitted.
Therefore, it is not true that a power of attorney is always required for both actions.
Statement b)
Statement b) is true.
Action I concerns withdrawal of an international patent application at the EPO as receiving Office.
A notice of withdrawal is governed by Rule 90bis PCT. Under Rule 90.4(e) PCT, where an agent or common representative submits such a notice of withdrawal, the requirement for a separate power of attorney cannot be waived.
The EPO PCT Guidelines confirm that, for withdrawals, if the agent or common representative has not yet been duly appointed, a power of attorney signed by all applicants must be submitted, and the EPO does not waive this requirement.
Thus, for withdrawal by a professional representative acting as agent, the power-of-attorney requirement is mandatory.
Statement c)
Statement c) is false.
Action II concerns filing a demand for international preliminary examination before the EPO acting as International Preliminary Examining Authority.
This is not a withdrawal. Therefore, the special non-waiver rule in Rule 90.4(e) PCT does not apply. The general waiver possibility under Rule 90.4(d) PCT applies instead.
The WIPO PCT Applicant’s Guide for the EPO as IPEA states that the EPO has waived the requirement that a separate power of attorney be submitted.
Accordingly, a power of attorney signed by each applicant is not always required for filing a demand before the EPO as IPEA.
Statement d)
Statement d) is false.
The waiver may apply for action II, but not for action I.
For filing a demand before the EPO as IPEA, the EPO has waived the requirement to submit a separate power of attorney. But for withdrawal of the international application, Rule 90.4(e) PCT expressly prevents waiver of the separate power-of-attorney requirement.
Thus, it is incorrect to say that the requirement may be waived for both actions.
Exam tip
For PCT representation questions, first identify the procedural act. For ordinary acts, the EPO may waive the need to file a power of attorney. But for withdrawals under Rule 90bis PCT, remember the absolute exception: no waiver under Rule 90.4(e) PCT.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.