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Important New Changes to US Patent Law for PCT Applicants


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: August 5, 2012 @ 1:13 pm

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We are rapidly closing on the next wave of implementation for the America Invents Act in the United States.  On 16 September 2011, the U.S. enacted landmark patent legislation.  As a result of the Leahy-Smith America Invents Act (AIA) the patent laws of the United States will experience the most widespread changes since the initial patent statute was first passed in 1790.  Not even the 1952 Patent Act is as sweeping because that almost exclusively codified decades of common law into the statute, with only one significant departure from the law as it evolved under the guidance of the Judicial system.

The most sweeping changes to American patent law will not take effect until March 16, 2013, but there have already been some changes and the next wave of changes become effective on September 16, 2012, on the anniversary of President Obama signing the bill into law.  The next round of changes largely deal with post grant procedures and challenges, but also deal with a variety of smaller issues, such as implementing the OED statute of limitations for disciplinary actions and the submission of third party prior art during a patent prosecution.

For the international community, however, there is an important change slated for September 16, 2012.  The AIA will changewho is entitled to be an applicant in U.S. national applications. This change will impact applicants who have filed under the Patent Cooperation Treaty (PCT).  The change removes the requirement that the inventors be named as applicants solely for the purposes of U.S. designation.



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Currently in the United States it is necessary to apply for a patent in the name of the inventor, and the inventor must sign either an oath or a declaration.  In relevant part the law states:

35 U.S.C. 115 Oath of applicant.

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen. […]

35 U.S.C. 25 Declaration in lieu of oath.

(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required. […]

As a result of the peculiarities of U.S. law, when the United States is designated in a PCT application (sometimes referred to as an “international patent application”) the inventors must be named as applicants.  This is a departure from the practice in other jurisdictions.  The U.S. rule is unique in requiring inventors to be named.  Throughout the rest of the world the applicant can be the owner of the rights, which commonly can be the employer of the inventor, for example.

Thanks to the changes to U.S. patent law ushered in by the AIA, for international applications filed on or after September 16, 2012, the assignee or other person to whom the inventor is under an obligation to assign the invention, or who otherwise has sufficient proprietary interest in innovation, may be the applicant even when the U.S. is designated. Notwithstanding, even though the United States will accept international applications where applicant is someone other than the inventor, U.S. law will still require inventors to be involved in the U.S. national stage process through the continued requirement that a U.S. inventor’s oath or declaration be submitted.

A declaration of inventorship can currently be submitted as part of the PCT application pursuant to PCT Rules 4.17(iv) and 51bis.1(a)(iv). Once the next wave of AIA changes go into effect on September 16, 2012, the current language of the PCT Rule 4.17(iv) declaration will not comply with the requirements of the AIA for international applications filed on or after September 16, 2012.



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PCT Applicants that will seek to designate the U.S. on or after September 16, 2012, should be aware that it will be unnecessary to identify the inventor as the applicant for international patent applications filed on or after September 16, 2012. This is despite the fact that the amendments to the PCT Regulations addressing this U.S. law change will likely not enter into effect before January 1, 2013.  The fifth session of the PCT Working Group has forwarded to the PCT Assembly the proposed technical amendments necessary to the PCT Regulations relating to American patent law changes brought about by enactment of the AIA.  The PCT Assembly is scheduled to address these technical changes in October 2012.

It is also worth pointing out that updates to the PCT-SAFE software, as well as other PCT e-filing software, will likely take some time.  WIPO expects that the e-filing software will be updated by January 2013.  Applicants using PCT-SAFE may, however, simply indicate that the applicant is applicant “for all designated States” and ignore any warning messages.  Despite the fact that PCT software will not be up to date on September 16, 2012, it is expected that PCT/RO/101 will be modified accordingly in time for the change.

For more information about the International Patent Process please see:

If you are interested in filing an international patent application in the United States, or entering the national stage in the United States based on a previously filed international patent application, please feel free to contact me.

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Posted in: Gene Quinn, International, IP News, IPWatchdog.com Articles, Patent Cooperation Treaty, Patents, WIPO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

5 comments
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  1. Please clarify. If the PCT application is derived from a US application, can the named applicant be the assignee. Keeping mind that there can be occasions when a US national phase will be filed out of a PCT application which itself derives from an earlier US application. For example a PCT filed as a continuation or CIP of a US parent.
    Also, it sounds like the new rule is optional, that is if the applicant wants to go by the prior rule, she can. Is that right?
    Please comment on these points. Thanks.

  2. Lawrence-

    Of course they can per the new FITF rules here in the US. Don’t hold your breath while waiting for someone to address all of your questions, because it doesn’t seem at all clear that Anybody knows the answers right about now. A work in progress….

  3. Speaking of PCT filings and slightly OT, I’ve had a devil of a time printing from Microsoft Word 2010 to pdf with A4 paper size for PCT efilings. It always defaults to 8.5×11. I’ll spare you the tortuous work arounds I’ve used in the past. Suffice to say here is the answer from Microsoft Answers.

    Assuming that your desktop printer can print A4 (and I can’t imagine that it cannot), then you should find A4 listed as a built-in size. Set that as the paper size for the document. Then go to File | Options | Advanced | Print and clear the check box for “Scale content for A4 or 8.5 x 11″ paper sizes.” Then try printing to PDF.

  4. Sure makes our lives much simpler … nothing like trying to get a signature on a document 30 months later…

  5. The US is simply modernising and about time. There is absolutely no question that when it comes to patenting, the UK is pre-eminent, way out ahead. The US and the rest are simply falling into line now digital is making the world a global village. Phone the UK patent office and somebody knowledgeable answers the phone. Do the same with the USPTO and see what I mean. Check out the USPTO website – unreadable, a dumping ground for ridiculous copy, written by illiterate US lawyers who have absolutely no interest in the reader, all they want to do is get out of the office asap and play golf. Lazy, lazy, lazy, just plain dumb, sadly probably both. Check out the UK IPO website – brilliant, well written, to the point.

    Clearly the first to file keeps the argument simple but having said that no inventor should rush to file. Better to take time and patent the best solution. There are many good books on the subject from a US point of view – Dummies and of course David Pressman but what alerted me to the international angle and what I guarantee will get you down and dirty fast, is Amazon’s little ebook on DIY patenting online. Once you take the international aspect on board the US had no option but to fall into line. The world no longer stops at the Pacific and Atlantic coast. Europe alone has twice the population of the US and patenting and all IP like copyright law is homogenising worldwide.