▍ Patent practice – helping an HK applicant to file a PCT international application

Written by Mr. Allen G. Zhou & Mr. Michael D. Stein in Stein IP | Oct 12 2022

Today, I want to share something practical. This whole story might not be one of those common occasions, but I think it is still worth reading.

For those friends and IP colleagues who read my posts before, you guys might aware of how much I like to discuss interesting IP topics. One of my dear friends, Mr. Michael Stein , brought out a question the other day – for a Hong Kong applicant, how many methods are there to file a PCT international application?

The background is the invention was completed in HK SAR. So, there is no confidential examination (i.e., foreign licensing request) required. As Michael’s firm is a qualified agency in the US, and our firm is a qualified agent in mainland China. We discussed this question from two angles with four scenarios.

1. It can directly instruct a Chinese agent (agent in mainland China, not HK agent) to file a PCT international application with CNIPA - RO, CNIPA; ISA, CNIPA or EPO is optional.

2. It can directly instruct a Chinese agent to file a PCT international application with IB - RO, IB; ISA, CNIPA or EPO is optional.

3. It can also directly instruct the US agent to file a PCT international application with IB - RO, IB; ISA, CNIPA. 

About this one, being designated as a “special address”, the US agent would continue to receive correspondence. The US agent can then continue to forward such correspondence to the client. It is when something needs to be filed with the IB that the CN agent is needed to have the POA. So if nothing else needs to be filed for a while, the US agent would be able to continue during that time to receive the correspondence.

4. It can not directly instruct the US agent to file a PCT international application with USPTO.

The US agent cannot file the PCT application with the USPTO as the RO since the applicant is not a national or resident of the US. It has to be done through the IB. 

About all the listed options in this post, there is something remaining to be confirmed. For example, item 3 – we know CNIPA can act as the ISA, is it the only one? Can EPO also do it when the US agent is the one to file the international application to IB?

Should you have any comments or ideas about this post, you are welcome to join us.