PA 10/2012: Situation where it may still be beneficial to indicate the inventor(s) as applicant(s) in an international application

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q: I am a US patent attorney and have filed in the past year a number of international applications with the United States Patent and Trademark Office as receiving Office (RO/US) in which the corporate applicant is a resident and national of the United Kingdom, and the applicant/inventors are residents and nationals of the United States of America. With the entry into force of changes included in the America Invents Act on 16 September 2012, under which the inventors are no longer required to be named as applicants for the purposes of the US designation in international applications filed on or after that date, I would like to know whether, given that the corporate applicant is a resident and national of the United Kingdom, I will still be able to file an international application with RO/US if the inventors are indicated in the request form as inventors only?

A: If there is no applicant with US residence or nationality, it will not be possible to validly file the international application with RO/US. International applications may only be filed with the national Office of, or acting for, the Contracting State of which the applicant is a resident or national, or with the International Bureau as receiving Office (PCT Rule 19.1). With the only applicant being a resident or national of the United Kingdom, the application can therefore be filed only with RO/GB, RO/EP or RO/IB; if you attempt to file the international application with RO/US, it will be transmitted to RO/IB under PCT Rule 19.4(a)(i) for further processing, provided that you have complied with any applicable national security provisions and that you pay the fee referred to in PCT Rule 19.4(b).

Also, if you file the international application with one of the three above-mentioned Offices, you will not be entitled to act as agent because the agent must have the right to practice before the national Office of, or acting for, a Contracting State of which the applicant is a resident or national (see PCT Rules 83.1bis and 90). Since the only applicant has GB residence and nationality, the agent should therefore be entitled to practice before RO/GB or RO/EP, and it is presumed that you have the right to practice only before RO/US.

Furthermore, if the application is filed with any of the above three offices, and the only applicant indicated in the international application has GB residence and nationality, in accordance with PCT Rules 35.3 and 59.1(b), the only competent International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) would be the EPO, and not the USPTO.

Note that this kind of scenario could be a reason for maintaining at least one of the inventors as an applicant for at least one of the designated States. You would do this by indicating in Box No. III of the request form (PCT/RO/101) that the applicant and inventor is an applicant for the purposes of either all designated States or of the States indicated in the Supplemental Box (listing the relevant States in that box), or making the relevant indication when using PCT SAFE or another e-filing software. Even though there is no longer a requirement to indicate the inventors as applicants for the US designation, doing so will not be considered a defect as it is still possible, under PCT Rule 4.5(d), to indicate different applicants for different designations, and it would not result in any loss of substantive rights. Maintaining one or more inventors as applicants would allow you to file with the RO/US, choose the USPTO as ISA and IPEA, as well as any other ISAs/IPEAs which have been specified by RO/US, and it would allow you to represent the applicant before the receiving Office and the international authorities. If you do this, you do not need to take into account any notice sent by the receiving Office or the IB reminding the applicant of the possibility of requesting a change under PCT Rule 92bis to change the status of the applicant/inventor to “inventor only”, or any equivalent warning messages in the e filing software. If you choose to name one of the inventors as applicant, you should be aware that the signature of the applicant/inventor would still be required if you subsequently wish to make any withdrawal (designation, priority claim or the international application).

Note that it is the nationality and residence of applicants as indicated on the international filing date which is relevant for determining the competence of the receiving Office and for determining the option(s) for choosing an ISA, irrespective of any later changes. Therefore, you would not be able to remedy the situation outlined in the first part of this practical advice by requesting the recording of a change under PCT Rule 92bis to change the status of an inventor to an applicant/inventor if you had already filed an international application listing only the corporate applicant as applicant. There must be an applicant with US residence or nationality at the time of filing in order to file with RO/US.

Although the general practice of indicating inventors as applicants for the purposes of “the United States of America only”, is expected to be discontinued (particularly as the request form and its electronic equivalent will no longer provide for that possibility), especially where all applicants have the same residence and nationality, circumstances do exist where this practice may still be considered. Notably, there could be a wider choice of receiving Offices, ISAs and IPEAs if there are applicants from different PCT Contracting States. When filing an international application, therefore, the specific circumstances of the application should be carefully reviewed before deciding who should be considered to be an applicant.

Your attention is drawn to the fact that, in order to include any person as an applicant in respect of an international application, that person must have the right to file the application. One situation where this might not be the case would be if the inventor had already assigned the rights for the invention to an applicant, for example to the company that he or she worked for, before the international application is filed.

Please bear in mind that the rights of the “main” applicant in a particular situation must be carefully considered, and it should be ensured that that applicant approves the naming of any additional person as applicant and understands all the legal implications of such a “joint” filing.


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