Legal framework
Under PCT Rule 19.1, the competent receiving Office is generally the national Office of, or acting for, the PCT Contracting State of which the applicant is a resident or national. The International Bureau may also act as receiving Office for applicants who are residents or nationals of a PCT Contracting State.
Whether an agent is required is not decided by PCT Rule 19.1 itself. It depends on the specific receiving Office, as set out in PCT Applicant’s Guide, Annex C. For France, Germany and the United States, the rules are different.
Statement a)
False.
A French person is entitled to file with the French National Institute of Industrial Property acting as receiving Office because the applicant is a French national under PCT Rule 19.1.
However, the question is whether an agent is required. According to PCT Applicant’s Guide, Annex C — RO/FR, an agent is not required if the applicant resides in a state that is a member of the European Union or party to the European Economic Area. Germany is an EU member state.
Therefore, a French person residing in Germany does not need an agent before RO/FR.
Statement b)
True.
A German person is entitled to file with the German Patent and Trade Mark Office acting as receiving Office because the applicant is a German national under PCT Rule 19.1.
However, PCT Applicant’s Guide, Annex C — RO/DE states that an agent is not required only if the applicant has a residence, principal place of business or establishment in Germany. If the applicant has none of these in Germany, an agent is required.
Here, the German person resides in France, and no German principal place of business or establishment is mentioned. Therefore, an agent is required.
Statement c)
True.
A French person may file with RO/FR because the applicant is a French national.
However, the French Annex C rule provides that an agent is not required only where the applicant resides in an EU or EEA state. A person residing in the United States does not satisfy that condition. Therefore, under PCT Applicant’s Guide, Annex C — RO/FR, an agent is required.
Statement c) is therefore true.
Statement d)
False.
The USPTO may act as receiving Office for a person who is a resident of the United States, even if that person is not a US national, under PCT Rule 19.1.
According to PCT Applicant’s Guide, Annex C — RO/US, the USPTO does not require an agent before it as receiving Office.
Therefore, a French person residing in the US does not need an agent before RO/US.
Exam tip
For PCT filing questions, separate two issues. First, ask whether the Office is a competent receiving Office under PCT Rule 19.1, based on nationality or residence. Second, check Annex C for that particular receiving Office to see whether an agent is required. France, Germany and the US use different tests.
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.