assignment for pct application

Please wait...

WIPO - PCT Applicant's Guide US - United States of America United States Patent and Trademark Office (USPTO)

Error information warning confirmation, useful information, international phase, annex b - information on contracting states or intergovernmental organization, annex c - receiving office, annex d - international searching authority, annex e - international preliminary examining authority, annex l - deposits of microorganisms and other biological material, national phase, summary of requirements for entry into the national phase, the procedure in the national phase.

International (PCT) Patent Applications - The Basics

Download flowchart of the procedure - PCT Member States

There is no such thing as an "international patent." However, it is possible to file an "international patent application" (also called a "PCT application") which, for a certain period of time, takes the place of the many individual foreign patent applications that would otherwise be required for protection abroad. After that period, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought, and these patent applications may then be pursued individually to obtain foreign patents.

These PCT applications are made possible by the Patent Cooperation Treaty (PCT), which is an international agreement administered by the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world. See our information sheet entitled PCT Member States.

Note that the PCT system does not examine patent applications fully and it does not grant patents. However, the PCT system does enable you to delay the very expensive step of filing many individual foreign patent applications, and it does provide you with some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before major costs are incurred.

Details of PCT Member States can be found here .

Patent protection abroad

Usually, an applicant begins by filing a patent application at the local national patent office, for example the UK Intellectual Property Office. This establishes a priority date. If patent protection is required abroad, it is necessary to file foreign patent applications. If these foreign patent applications are filed within one year from the priority date (the priority period), then they count as if they had been filed on the priority date.

International patent applications

Instead of filing many individual foreign patent applications, it is possible to file a single "international" or "PCT" patent application, if all of the required countries/regions are members of the PCT. For a period, referred to as the International Phase, this PCT application takes the place of the many individual foreign patent applications that would otherwise have been required.

Afterwards, in a period referred to as the National/Regional Phase, the PCT application is converted into many individual foreign patent applications, one in each country where patent protection is to be sought.

The International Phase

The International Phase begins with the filing of the PCT application and ends when the PCT application is taken into ("enters") the National/Regional Phase. The International Phase consists of a Chapter I Phase and, if an optional Demand has been filed, a Chapter II Phase.

PCT applications are automatically subject to both search and examination. The examination may be without interaction between the applicant and the Examiner (under Chapter I) or with interaction between the applicant and the Examiner (under Chapter II).

The Chapter I Phase includes: filing the PCT application; preparation of the International Search Report (ISR) and the Written Opinion of the International Search Authority (WOISA); the optional filing of amended claims in response to the ISR; the optional filing of “informal comments” in response to the WOISA; and the publication of the international patent application, with the ISR and any amended claims which have been filed. If a Demand is not filed (see below), the WOISA is later reissued as the International Preliminary Report on Patentability under Chapter I (IPRP/ Chapter I).

The optional Chapter II Phase includes the filing of a Demand ( see here for details ), usually with amendments and/or arguments to address any objections raised in the WOISA, and the subsequent preparation of the IPRP/Chapter II.

The Applicant(s)

Not everyone is allowed to file a PCT application. There must be at least one applicant who is a resident or national of a country that is a member of the PCT. The residences and nationalities of the applicants also determine where the PCT application can be filed.

If none of the applicants is a resident or national of a member state, then a PCT application cannot be filed. The UK is a member of the PCT. Thus, a UK company or a UK national or resident is entitled to file a PCT application, and it can be filed at the UK Intellectual Property Office. If none of the applicants is a UK resident or national, but at least one applicant is a resident or national of a PCT member state, then a PCT application can still be filed. Depending upon the details, we may still be able to file the PCT application on your behalf, for example at the European Patent Office (EPO) or at the International Bureau (IB) of WIPO in Geneva.

A PCT application automatically covers many countries, and it is possible to have different applicants for different countries.

When any applicant in the PCT application is not also an inventor, we strongly recommend that, at the time of filing the PCT application, the inventor(s) sign an assignment document. This is intended to avoid or reduce possible difficulties of establishing ownership in various countries, later on in the process, for example at the time of entry into the National/Regional Phase, when an inventor may be unavailable or unwilling to sign new documents. If you would like further information on assignments, please let us know.

Filing formalities

If there is at least one applicant who is a UK resident or national, the PCT application is usually filed at the UK Intellectual Property Office. In such cases, the patent specification and the associated formal papers are filed in English.

It is generally necessary to provide the names, contact addresses and nationalities of the applicants, as well as the names and contact addresses of the inventors.

It is no longer necessary to choose which countries/regions or which types of protection (e.g., patents, utility models, etc.) you wish. Instead, the PCT application provides automatic coverage for all member states and all types of protection available under the PCT at the time of filing the PCT application. At present there are about 150 countries/regions: see our information sheet entitled PCT Member States.

Although in most cases it is no longer necessary to file additional documents (e.g. Appointment of Agent forms) signed by the applicants and inventors, this is still sometimes recommended. Also, it may be necessary to file good quality versions of any drawings.

The ISR and WOISA

Shortly after the PCT application has been filed, a copy will be forwarded to a competent national/regional patent office, who will act as the International Searching Authority (ISA) (for PCT applications filed at the UK Intellectual Property Office, the ISA is the EPO). The ISA will conduct a search of the relevant prior art, and will prepare both an International Search Report (ISR) and a Written Opinion (WOISA).

The ISR may include, for example, documents considered to be relevant for novelty and inventiveness. The WOISA is an initial opinion on the core patentability requirements: novelty, inventiveness and industrial applicability.

It is possible to file amended claims in reply to the ISR. It is also possible to file informal comments in reply to the WOISA. It is also possible to challenge the initial findings in the WOISA by filing a Demand (see below). If a Demand is not filed, the WOISA is later reissued without change as the IPRP/Chapter I.

Publication

The international patent application will be published on a Thursday shortly after 18 months from the priority date. The published claims will form the basis for “provisional protection” in those countries which offer it. If possible, the ISR will be included in the publication. If not, it will be published later. If amended claims are filed in response to the ISR, these too will be published, and they will form the basis for “provisional protection.” The WOISA, and any informal comments filed in reply to the WOISA, will not be published, but will be made available to the public via WIPO’s online file inspection service. Publication can only be prevented by withdrawing the international patent application, no later than about three weeks before the expected publication date.

Chapter II Demand

PCT applications are automatically subject to examination. By default, the examination is performed without interaction between the applicant and the Examiner (under Chapter I). However, if a Demand is filed, examination is performed with interaction between the applicant and the Examiner (under Chapter II). For a more detailed discussion of the Chapter II Phase, please refer to our information sheet entitled Chapter II Demand .

Examination under Chapter II will be of most interest to applicants who wish to address one or more objections expressed in a negative WOISA, and thereby attempt to obtain a more positive IPRP. Also, examination under Chapter II permits central prosecution of the application before a single patent office, and can be used to reduce the number of objections that will need to be addressed later, during the National/Regional Phase, before individual patent offices. This is especially true for the European Regional Phase, where further examination essentially continues from where the international examination stopped.

The deadline for filing the Demand is the later of: 22 months from the priority date, and 3 months from the issuance of the WOISA. Amendments and/or arguments addressing the objections raised in the WOISA must be filed by the same deadline, and are usually filed at the same time as the Demand. The Examiner then reconsiders the WOISA, in view of any amendments and/or arguments that have been filed, and issues the IPRP/Chapter II. In some cases, a second Written Opinion is issued, inviting further reply before the IPRP/Chapter II is issued.

The IPRP, whether under Chapter I or Chapter II, is a nonbinding opinion on the core patentability requirements: novelty, inventiveness and industrial applicability. The IPRP often gives a good indication of the prospects of actually obtaining granted patents, and their potential scope of protection.

Many countries will use the IPRP as the starting point for further examination in the National/Regional phase. However, some countries will ignore the IPRP and will conduct examination in the National/Regional Phase "from scratch".

Entering the National/Regional phase

The PCT application itself will never become a patent. Instead, the PCT application must be taken into the National/Regional Phase in those countries/regions where patent protection is to be sought. This must be done by the appropriate deadline. Each of the resulting individual National/Regional Phase patent applications is then pursued, before the respective national/regional patent offices, in order to obtain individual granted patents.

The normal deadline for entering the National/Regional Phase is 30 months from the priority date. Individual countries/regions may allow more time and, in practice, the deadline for most countries/regions is either 30 or 31 months from the priority date. In general, you will need to decide in which countries/regions you wish to proceed well before 30 months from the priority date. Note that, if desired, it is possible to enter the National/Regional Phase “early”, before the deadline.

Before April 2002, the deadline for entering the National/Regional Phase was 20 months from the priority date, unless a Chapter II Demand was filed by 19 months from the priority date, in which case the deadline for entering the National/Regional Phase was extended to 30 months from the priority date. In April 2002, the PCT was amended so that the deadline for entering the National/Regional Phase is 30 months from the priority date, whether or not a demand has been filed by 19 months from the priority date. However, some “reservation” countries gave formal notification that their national laws were not compatible with the amended PCT and that the old deadline would continue to apply in their country. Most of these countries have since withdrawn their reservations. As at 1st December 2021, there are only two reservation countries: Luxembourg (LU) and Tanzania (TZ). However, each of these countries can be reached via “Regional Phase” patent applications filed via the European Patent Office (EPO) and the African Regional Property Organisation (ARIPO) by the normal (30 or 31 month) deadline, and so, if the regional route is employed, then it is not necessary to file a Demand. However, if you wish to enter the National Phase in any of these countries (rather than the corresponding Regional Phase), then it is necessary to file a Demand by 19 months from the priority date if you wish to delay the National Phase deadline from 20 to 30 months.

Entry into National/Regional phase

The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney as your representative, filing a few formal documents, paying certain official fees and submitting a translation of the application into a local official language if necessary. Again, it may be necessary to obtain certain formal documents, signed by the applicants and the inventors.

For example, for an English language PCT application, it is necessary to prepare and file a Japanese language translation of the entire application within two months of entering the Japanese National Phase. Note that, for many countries, the translation must be filed no later than the National/Regional Phase deadline, and so you must allow sufficient time, before the deadline, for its preparation.

Further Examination

When the PCT application enters the National/Regional Phase, it is handled according to the usual treatment of patent applications in the countries or regions involved, and all of the local time limits, laws, rules, and procedures must be observed.

Some countries/regions, such as the USA and the EPO, may perform their own supplementary search before examining the application. If the EPO was the ISA, then after entering the European Regional Phase, further examination will almost certainly be performed by the same EPO Examiner who prepared the IPRP. If the IPRP was positive, then there should be no serious problems during the European Regional Phase.

However, after entering the US National Phase, the US Examiner may pay little heed to what happened during the International Phase, and further examination may well be "from scratch".

Advantages and disadvantages

Advantages of the PCT route, as compared to filing individual foreign patent applications, include:

• lower costs at the end of the priority period;
• decisions about where to pursue patent protection, and the substantial costs of filing individual foreign patent applications, are delayed until the end of the International Phase (typically an additional period of about 18 months);
• if the decision to seek foreign patent protection is taken very near to the end of the one year priority period, there may not be sufficient time to prepare and file individual foreign patent applications; instead, a single PCT application, in English, can be filed.

Disadvantages of the PCT route, as compared to filing individual foreign patent applications, include:

• the overall costs are higher;
• it usually takes longer to get patents granted via the PCT route.

As a rough guide, the minimum cost of filing a PCT application (for example, having a total of 50 pages), including the official fees but excluding the costs of drafting the specification, is approximately £4000 (excl.VAT). Typically, the total cost of filing a PCT application is about £5500-£8000 (excl.VAT).

The cost of filing an optional Demand, including the official fees but excluding the costs of filing any arguments and/or amendments in reply to the WOISA, is approximately £2200 (excl.VAT). Usually, about £1000 of this cost will be recouped when entering the European Regional Phase.

The cost of entering the National/Regional Phase in a particular country/region is roughly the same as the cost of filing a "direct" patent application in that country/region. Typically, the cost for each country/region is in the range £1000-£5000 (excl.VAT), plus the cost of preparing a translation into a local official language if necessary. We can provide more precise estimates on a case-by-case basis.

Process of a Typical PCT Application

T his information is simplified and must not be taken as a definitive statement of the law or practice.

• Patents - General ,
• Patents - International ,
• IP Protection

Our IP specialists work at all stage of the IP life cycle and provide strategic advice about patent, trade mark and registered designs, as well as any IP-related disputes and legal and commercial requirements.

News & Insights

Read our blogs to keep up to date with developments in the IP world and what we are up to at Mewburn Ellis.

Getting a patent – the initial steps

Why record changes of ownership at the epo, third party observations explained.

We have an easily-accessible office in central London, as well as a number of regional offices throughout the UK and an office in Munich, Germany. We’d love to hear from you, so please get in touch.

Ant-Like Persistence

Recording at USPTO for a PCT that was not filed in RO/US?

A loyal reader asks:

If we have a PCT application filed in a receiving office other than the USPTO, will the USPTO record an assignment against that PCT application in advance of US national phase entry? For example: For PCT/CN2019/123456, I have an executed English language assignment. If I file it via EPAS with the CN PCT number, will the USPTO record it?

The USPTO will record any document affecting title with respect to any US patent application.  And any PCT application that designates the US counts as a US patent application (35 USC § 363) regardless of whether or not the US national phase has been entered.  From this it follows automatically that the USPTO will record any document affecting title with respect to any PCT application that designates the US.  (Socrates is a man, all men are mortal, therefore Socrates is mortal, that kind of thing.)  You get the same answer to this question no matter which Receiving Office happens to have been selected by the filer.  And it is the same answer regardless of whether the US national phase has or has not been entered.  Such a recording may be carried out before the US national phase has been entered, and may be carried out even if the US national phase entry never actually happens.  Such a recording may be carried out even after the international phase has ended (in other words, it can happen after the end of the 30-month period).

Actually nobody at the USPTO, no computer system at the USPTO, ever actually checks to see whether the PCT application actually designates the US.  Thus actual observed behavior is that the USPTO will record any document affecting title with respect to any PCT application no matter whether or not it designates the US.

And of course the recordation is free of charge — no government fee.

And of course anyone can carry out the recordation — there is no requirement that the filer be a registered practitioner or have an address in the US.

Which then brings us to 35 USC § 261, which reminds that it is a Best Practice (indeed almost malpractice avoidance) to record any assignment within three months of its date of execution.  So for example if a PCT application (designating the US) were to be assigned, it would be a Best Practice to record it at the USPTO within three months.  This would be the case regardless of the Receiving Office in which it had been filed.

The alert reader might wonder, if we record against the PCT application number, and later enter the US national phase, will the recordation automatically cover the US application number?   You can see the answer here .

Share this:

5 replies to “recording at uspto for a pct that was not filed in ro/us”.

Great tip! Although it seems obvious from what you have written, could you expressly confirm that it is possible to record such an assignment before the PCT enters US National Phase, or without it ever entering US National Phase?

Thank you for posting your comment. The answer to both questions is “yes” and prompted by your comment I have revised the blog article to say this.

• Pingback: Worthwhile recording after the three months has passed? - Ant-like Persistence
• Pingback: Is it important to record assignments in divisional and continuation cases? - Ant-like Persistence

I recently filed a U.S. national phase application from a PCT application. A declaration and an assignment was filed in the International Application. Based on the understanding that the PCT application and national phase application are essentially the same application, I didn’t think we needed to file/record the PCT assignment against the national phase application.

I conducted a similar experiment, as noted in one of Carl’s blogs, where I entered the PCT application number while generating the recordation transmittal through the EPAS system and received a message that “The associated application number 17XXXXXX for PCT number US20XXXXX already exists in the list of properties”. This leads me to believe that recording the PCT assignment in the national phase case is unnecessary. However, to be certain, I contacted the PCT Help Desk at the USPTO and was referred to the Assignment Division. The person at the Assignment Division said that an assignment needs to be recorded in the national phase case.

On a side note, before I conducted my “experiment”, I accessed the PCT application in Private PAIR, clicked on the Assignment tab, and saw the recorded assignment data. I did the same for the national phase application and saw a blurb that read something like “no assignment data has been recorded”. I wasn’t sure if any assignment data would appear in the national phase application because it appeared that the two applications were linked in my experiment above. I also looked in the AOTW or the USPTO Patent Assignment Search database where I searched for the national phase application AND the PCT application and “0 results” appeared for either application, even though there’s recorded assignment data for the PCT application.

I haven’t worked in the IP industry long and would like to be certain how I should proceed in this type of scenario as I cannot seem to get a clear-cut, definitive answer. Can anyone confirm whether or not I should file the PCT assignment document in the national phase case? Any insight would be appreciated.

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Save my name, email, and website in this browser for the next time I comment.

Notify me of follow-up comments by email.

Notify me of new posts by email.

• Blog Homepage
• Blog Contributors

IP Law Bulletin

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

• Follow us on Facebook
• Follow us on Twitter
• Follow us on LinkedIn

Recent Posts

• Cryptocurrency Valuation Swings and Centralization
• What Happens After a Patent Application Is Filed in the U.S.?
• USPTO Announces Extension of the Expanded Collaborative Search Pilot Program
• Protecting Intellectual Property FAQs
• Innovation in the Remote Work Environment: May You Flourish in These Challenging Times
• Coronavirus Impacts Intellectual Property Too: Update on Patent and Trademark Prosecution at Various IP Offices in the World
• Establishing and Protecting IP Rights Globally: A Case Study
• PTO Increases Annual Limit of Track One Prioritized Examination to Keep Pace with Applicant Interest
• International IP Expansion Considerations
• Patent Holders, Protect Your IP with These Tips on Patent Term Adjustment

Popular Topics

• Rules and Regulations
• Post-Grant Proceedings
• Patent Prosecution
• Patent Eligibility
• Patentable Subject Matter
• Post Grant Review
• Data Privacy

Contributors

• Kenneth R. Berman
• Patrick J. Concannon
• Emmanuel D. Filandrianos
• Micah W. Miller
• Thomas J. Tuytschaevers

• Our Professionals
• Our Insights
• Your Finnegan
• Articles & Books
• Ad Law Buzz Blog
• At the PTAB Blog
• European IP Blog

Federal Circuit IP Blog

INCONTESTABLE® Blog

• IP Health Blog

Prosecution First Blog

• Events & Webinars
• Unified Patent Court (UPC) Hub

To File or Not to File As An Applicant-Assignee: That Is the Question

March 11, 2013

Authored and Edited by Adriana L. Burgy ; Jeffrey A. Berkowitz

One of the recent changes under the AIA allows for an assignee, an obligated assignee (e.g., a person with an assignment clause in their employment agreement), or a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute a patent application as the “applicant.” This definitional change no longer makes the “applicant” synonymous with the inventor(s) and harmonizes the term more with international conventions. It also leads to the question:  are there any reasons to or not to file as the applicant-assignee? 

Here are some considerations when determining whether to file as the applicant-assignee: 

• When the assignee is the applicant, the assignee may grant the power of attorney without having to establish a right to take action. 
• Even though an assignee may file and prosecute the application, the inventor(s) must still execute an oath or declaration (except in limited circumstances). 
• For an assignee or obligated assignee, evidence of ownership (e.g., an assignment or an employment agreement) should be recorded no later than when the issue fee is paid. 
• If an assignment is not executed prior to filing (and there is no obligation to assign or proprietary interest in the matter), care should be taken if filing as the applicant-assignee and consideration should be given to filing in the names of the inventors. A party having less than the entire right, title, and interest may not on their own file the patent application.
• Juristic entities (e.g., organizational assignees) must be represented by a patent practitioner and can no longer act pro se . 
• In continuing applications (with a parent application having a filing date on or after September 16, 2012), a new power of attorney is not necessary. The assignee can file the power of attorney filed in the parent application, even if a new inventor is added as long as that inventor assigns or is under an obligation to assign to that same assignee and the assignment is recorded. 
• When you nationalize a PCT application in the United States, the applicant identified at the international stage will now be the applicant at the national stage. Thus, one can file at the international stage in the name of the inventors and once assignments have been signed, file a request for change at the international stage to the assignee. This allows for nationalizing in the United States as the applicant-assignee.

• Keisen Professionals
• Patents and Utility Models
• Reinstatement (Missed Deadlines)
• Trademarks (Madrid Protocol etc.)
• Industrial Designs
• Searches and Opinions
• Technology Scouting & Transfer
• PCT National Entry To Japan
• Tokyo, Japan
• Philadelphia, PA
• Testimonials
• Japan Technology Group

Q&A: How to Record an Assignment of Patent Rights in a PCT-JP Application

Keisen Associates > Patent > Amendments > Q&A: How to Record an Assignment of Patent Rights in a PCT-JP Application

We have been asked what to do about recording a new applicant for a patent application that started in the PCT international phase but will be entering Japan. This may particularly take place after the original applicant(s) assign rights to another party. Here are some thoughts.

I gained rights to this PCT application but have not submitted a Recording of Change under PCT Regulation, Rule 92bis. What should I do to be treated as applicant in the Japanese national phase?

We would generally strongly recommend an applicant to try to get a 92bis Recording of Changes filed during the PCT international phase, before the 30 months after priority date pass, if at all able to do so.

For your information, we have dealt with a case when a 92bis was submitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO) before the 30-month deadline but only received after the deadline, so extra amendment was necessary in the national phase. Therefore, please try to get the 92bis Recording filed quickly (online, perhaps). If it does end up being late although it was submitted on time, redress for this issue may be possible for your case.

What is the problem with filing a change after the national phase entry?

It is possible to file an Assignment after entry to Japanese national phase. However, this would mean extra cost and effort. The advantage of using a 92bis Recording during the international phase is that it may be applied for all countries where the applicant enters national phase, saving the hassle of meeting individualized countries or regions’ requirements to register an assignment of patent rights.

  * For questions or consultation, please contact us for more information. ** The information provided on this website is for informational purposes only and is not intended as legal advice. Taro Yaguchi

World Intellectual Property Organization. “ Rule 92bis of the Regulations under the PCT ,” accessed July 10, 2018.

← Previous post

Next post →

CALL US TODAY FOR A FREE CONSULTATION

1-215-701-6349 (philadelphia), 81-3-5298-6552 (tokyo), any questions contact us using the form bellow..

Your Email Address

Your Message

Related Posts

• Search Site

Headquarters

501 Boylston Street, 10th Floor

Boston, MA 02116

(617)-737-5010

[email protected]

Search our Site

On-demand insights, when obtaining a patent assignment just isn’t enough.

By Peter Gordon, • February 11, 2019

Many university technology managers are familiar with the following scenario: an invention disclosure is received, often at the last minute before a publication; a provisional patent application is filed; a full application is later drafted and filed as a PCT application; and finally, national phase applications are filed, at least in the U.S. and perhaps other countries. At some point along this process, and often after the U.S. national phase applications are filed, the inventors’ declarations and assignments are executed.

Technology managers understand the importance of actually obtaining an executed assignment, due to the U.S. Supreme Court’s decision several years ago in Stanford v. Roche . They also are well aware of the obvious problem with waiting to obtain an assignment: an inventor may refuse to sign or could leave their position before being asked to signed documents. However, technology managers also need to pay attention to other esoteric aspects of patent law, including claiming “rights of priority,” identifying the “applicant,” and timing of execution of assignments. Failure to pay attention to these finer points could potentially result in a loss of, or an increased cost for retaining, rights outside the U.S.

For example, when a provisional patent application is filed, the named applicant is the entity which owns the right to claim priority to the provisional.  A later PCT applicant must own this right for it to be validly claimed.  If the applicant for the provisional application is the inventor, and the applicant for the PCT application is the university, then a claim of priority to the provisional application might not be valid. If the PCT application is not entitled to the priority claim, then intervening prior art, such as the inventor’s own publication, could result in lack of novelty of non-U.S. national phase applications based on that PCT application. Obtaining an assignment prior to filing the PCT application, or naming the university as the applicant on the provisional application, may resolve the problem.

To better protect the university’s IP rights outside the U.S., we recommend the following:

• Ensure an Application Data Sheet is filed in a U.S provisional patent application.

In the U.S., an Application Data Sheet (“ADS”) is a form that allows someone other than the inventor to be designated as the “Applicant” of a U.S. patent application.  More precisely, the ADS is the only way to designate an entity, other than the inventor, as the Applicant of a U.S. patent application. You might ask, why isn’t an ADS always filed in a provisional application as a matter of course? Quite simply, it is not required and, therefore, often skipped. Also, for an entity to be an Applicant, there must be an assignment, or an obligation to assign, to that entity – making filing of the ADS a good opportunity to check those assignment obligations! The ADS should be filed at the time of filing a provisional application, although it can be filed later with a little extra paperwork (if diligence cannot be timely completed to confirm that all inventors have an obligation to assign).

• Ensure that the applicant owns the right to claim priority at the time of filing a later application

To establish the right, in a later application, to claim priority to a prior application, one must either:

• Match the name of the Applicant on the later application to the name of the Applicant on the prior application. For example, by filing an ADS in a provisional application specifying an Applicant, this same Applicant can be named as the applicant on a PCT application. Or, if no ADS was filed in the provisional, then the PCT Request should name the inventors as the Applicant on the PCT application.
• prior to filing the later application, ensure that there is an assignment of the prior application to the new Applicant and that the assignment assigns the right of priority. Here, it is important to ensure that the assignment document specifically mentions the right of priority. It is also a good idea to consider inventorship, ownership, and applicant status of any new matter introduced in the later application. [1]
• Set expectations about executing legal documents early in the process.

Simply recommending that inventors sign documents early in the patent process, preferably at the time of filing, doesn’t help in situations where applications are filed at the last minute or when e-mails and phone calls are ignored. A more practical recommendation for addressing this problem is to start by setting expectations.  Let inventors know, at the beginning of the process, that legal documents will be signed as part of completing the application for filing. Instruct prosecution counsel to file each patent application with signatures from the inventors, to discuss this expectation with the inventors, and communicate promptly about any problems. By setting such expectations early in the process, you are more likely to obtain those signatures, or otherwise identify earlier if there will be a problem in obtaining signatures. Even if a provisional is filed without an ADS or executed assignment, taking longer than three months after filing to submit these documents should raise a flag.

• Customize your docketing system to include earlier dates for executing documents and verifying applicant status.

Docketing systems generally docket only required dates by default. Since the above- recommended actions are not required , it is important to customize the docketing system and otherwise create and implement a process around them.  For example, docket an action of “Verify ADS filed” within three (3) months of filing a provisional application.

We routinely work with TTOs to help improve internal processes to avoid issues like those described above.  We advise our TTO clients to consider incorporating such recommendations into their day-to-day internal processes, such as by clearly defining responsibilities of the inventors, outside counsel, and the technology transfer office, using checklists and the docketing system to implement processes, and conducting periodic portfolio reviews to detect potential issues and ensure compliance.

If you have questions about internal processes for managing patent filings, our team would be happy to help. Feel free to contact Peter Gordon directly at [email protected] or to request more information by visiting our Contact Us page.

[1] For some countries, an assignment also needs to be signed by the assignee, to indicate “acceptance”. Having the applicant defined as the university at the outset may reduce the impact of this issue.

Leave a Reply Cancel reply

You must be logged in to post a comment.

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

PCT - National Stage Processing and Entry

National Stage Processing and Entry in the United States of America

Information on PCT Designated/Elected States (PCT Applicants Guide, Volume II)

Some contents linked to on this page require a plug-in for PDF File.

Additional information about this page