[Patentpractice] [Pct] Inconsistent name between priority doc and PCT re "The University of X" vs "University of X"

Fri Sep 26 21:29:42 UTC 2025

To amplify Dan Feigelson's post, it's really important to know how domestic
benefit, international priority, and PCT national phase are the same (not
very much) and how they're different.   If you see any bugs in this, please
let me know!

  U.S. § 120 benefit is a completely different thing than Paris Convention
Art. 4 priority.  And § 371 national phase entry is a third entirely
different thing.  They serve different purposes, and the public policy
tradeoffs are different.   That leads to rules that are completely
different.  It isn't a difference of degree; it's conceptual and cultural
incompatibility.  The things that matter are completely different.  They
are as different as written description vs. enablement—you cannot transfer
what you know about one to the context of the other:

*Benefit under U.S. § 120 (either U.S.-to-U.S. or a PCT bypass)*

*Priority under Paris Convention Art. 4*

*U.S. National Phase entry (not a new application) under § 371 (non-bypass)*

Continuity of pendency.  That can last up to 20 years.  Applications can
link in a chain, as long as there's copendency at each link--the latest
application need not be copending with the earliest, if the middle links
establish copendency.

Twelve months from the *earliest* application (Art. 4(C)(2), with the
qualifications of Art. 4(C)(4)), “whatever may be the subsequent fate of
the application” (Art. 4(A)(3)).  Copendency is *irrelevant*.

Within 30 months of the earliest priority date.

Continuity of inventorship, overlap of at least one inventor.  At least one
inventor must be continuous end-to-end.  Continuity of applicant or
assignee is irrelevant.

Continuity of applicant (same applicant or successor in title) (Art.
4(A)(1)).  Continuity of inventorship is irrelevant.

Continuity of applicant for any Paris Convention claims during the first
year, and continuity of inventorship from PCT international phase to U.S.
national phase.

Continuity of disclosure.  A § 120 continuation-in-part can add new
matter.  Continuity of disclosure must exist throughout the chain,
end-to-end: you can't have disclosure in A, drop it in B, then bring it
back in C.  In the U.S., continuity of disclosure can be achieved via
incorporation by reference.

Essentially similar, subject to (a) the daughter jurisdiction's analogs of
U.S. § 112(a) written description and enablement (which tend to be stricter
than U.S. law), and (b) the daughter jurisdiction's rules for CIP's (in
most countries, limited to one year from earliest filing)

A § 371 national phase entry is *not* a new application; it is the *same*
application (§ 363) with a new serial number (and new rules for form -- PCT
Rule 11 swaps out, 37 C.F.R. § 1.52 swaps in). Because the § 371 *is* the
PCT application, this is satisfied trivially.  No possibility for CIP new
matter.

Continuity of benefit claim, including requirement of an ADS.  Each
application must claim benefit and priority to all parents.

Essentially the same substantively; procedure differs depending on the
procedural law of the daughter jurisdiction.

Same as for U.S. § 111(a).

Because the § 371 *is* the PCT application, this is satisfied trivially.

Day one filing requirements are the same as for a new application:
specification and drawings (which may be satisfied by “filing by reference”
under 37 C.F.R. § 1.57(a)), plus, in due course, oath/declaration, fees,
ADS, etc.

Essentially similar to column 1

A § 371 national phase entry is more analogous to an RCE than to a new
filing.  All that’s required is a paper that identifies the PCT
application, and pay the base national phase fee.  Optionally, you can pay
the search fee and the exam fee, and include an Application Data Sheet.

No requirement for certified copy if the parent is either a U.S.
application, or a PCT filed in RO/US.  If this is a PCT bypass claiming
priority to a non-RO/US application, certified copy required.

Proactive obligation to file a certified copy within three months, even if
the daughter jurisdiction hasn’t asked for it (Art. 4(D)(3)).

Each parent follows its own rules.  For example, for a U.S. benefit parent,
or a PCT RO/US parent, you don't need a certified copy.  For a
non-US-national priority application or a PCT application not filed in
RO/US, you have a proactive obligation to file certified copy within four
months of U.S. national phase entry, or sixteen months from the “prior
foreign application,” even if the U.S. doesn’t ask for it.  37 C.F.R. §
1.55(f)(2)

A daughter application can only claim § 120 benefit from a U.S.
application, or a PCT application designating the United States.

The parent application must be “equivalent to a regular national filing
under the domestic legislation of any country” but it must be an “other
country” (Art. 4(A)(1) and (3)).  No same-country priority claims under the
Paris Convention.

A U.S. § 371 national phase entry *is *the PCT application (just with a new
serial number), and retains exactly the same priority claims as the PCT
application.

To serve as a parent to support a subsequent benefit claim, the parent must
have all filing requirements completed, including payment of fees.  E.g., §
119(e)(2).

"Any filing that is equivalent to a regular national filing" as of its
filing date may support a subsequent Paris Convention claim, "whatever may
be the subsequent fate of the application"  Art. 4(A)(2) and (3).  To
remove an earlier application as a one-year bar, it must be affirmatively
abandoned before the next application in the chain is filed.  Art. 4(C)(4).

A provisional for which fees were never paid can serve as basis for a Paris
Convention claim in any country other than the U.S.

A provisional for which fees were never paid cannot serve as basis for a
subsequent benefit

A § 171 design daughter can claim § 120 benefit from a U.S. national
utility application or from a PCT-designating-the-U.S. application (but not
§ 119(e) priority from a provisional).

Design patents (as ”industrial designs”) have the same priority right, but
only for six months (instead of a year)    Art. 4(C)(1).

The PCT doesn’t recognize any design right.

On Thu, Sep 25, 2025 at 5:44 PM Dan Feigelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Karen, I can't say if there's relevant case law on this, but working from
>> first principles, it seems to me that if you're only concerned about the
>> USA, there's no 35 USC 120 governs here, and that section focuses on there
>> being a common *inventor* between the two applications (in this case,
>> the the provisional and the PCT), not the named applicant.
>>
>> " An application for patent for an invention disclosed in the manner
>> provided by *section 112(a)
>> <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/uyqt7ErNc9RT951Sw10ErWKC7kmQy1e-56QyEcvFvZVkEZuuhVfNMNpRFTm2w7I5SE5qv4qGzUR23apREQ4n1-JR-WHig4aCwEPQOT_oJ8awXemgNpJYLe3ITPVmxuwPIXFzMLwSyaaf-QSU_eCMUfF5CkZAox9xqWEHBRgws_o408iKzbyk2JM7MWuEMBslMLm3Y8vMfVm5kcR4MJce5PEtae6Gl90MLyeCGHBnKX18rLLsqSlCBWVkY53e1aWi0093B1CgZcUR5a9HLTj2abU_RjmksHpLBJcCb3FHEAPOG1BQwqaud21d2p1nAt4mE1QAdc1vGHE8ZNJ4LEqU2l0e7RKId05J>*
>> (other than the requirement to disclose the best mode) in an application
>> previously filed in the United States, or as provided by *section 363
>> <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/jiq2lD8eEiid2-AwpS7Vp1SlqnhB1DULd6tkoDPartI12W2hTR3xNSpgVnX1TB2GiRDntm37iLYEubMUCw8uB6xqr8wDofaRqlZM0rA2dGSnH_C6feOBOpB-dxYR5LE7YMXRH_WUHv7bQd_wMupcjgs99sT02vmxAM-fsO-8G9_3JJDr-wCrtwOxdpZvkyAmQwlf9rgWEh8WwM5tIIM6Ece5b4aG33-uMRuZqAzQJFRu2K23qxmsutrBOylxPZLSkhTMUbm179uEg_nQfvEP4HvdIwUXbLIl8LYb4hFfgvLd0NbfteeAjykpPm_KGp73VpQ0JB2NzAFOd4NqZS69lbGt2pgz1425>*
>> or *385
>> <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/RKC6E5iTHea2mu3IDCb38DMQkB-Tnph46jRAIx2l1v_ALZi0hY2ycGLa2nzgvHi38cCWd4woZvYN1eddcG5yR-o_ARGnIb0xnhjjdCn1liwSu2UtvOC--OlngXy8QWT5f_jCj5hfsR8z2cf1Xz0-292Xlk_fITiBTj5t1QRtmulTYzPMmc1OBGYCMdNh6AUjv7dG_NsMdkUvxFXaIZjmiUlZKsZLwTz8RV84cu_YoBQCWYYNyPXivBTJZuNvzv3jPryY8rST3JvVzGrgnrAgYy3O5kNU66eNkdEL4q6oU4NmNkdxt_IpUHng4hjFmhW34Jc5vEsVWKTQBHdYJsT1CWQ_8J5LaUjk7p13EwXIEw>*
>> which names an inventor or joint inventor in the previously filed
>> application shall have the same effect, as to such invention, as though
>> filed on the date of the prior application, if filed before the patenting
>> or abandonment of or termination of proceedings on the first application or
>> on an application similarly entitled to the benefit of the filing date of
>> the first application and if it contains or is amended to contain a
>> specific reference to the earlier filed application. * * *"
>>
>> So as far as the applicant name goes, I would go with whatever's on the
>> PCT. If there's still time to get the names aligned on the PCT and
>> provisional, then do so (as PL suggested), if not, clean up the mess
>> afterward (as Scott suggests).
>>
>> Might be a different story outside the USA, but I gather that's not for
>> you to deal with.
>>
>>
>> On Fri, Sep 26, 2025 at 12:34 AM Patent Lawyer via Patentpractice <
>> patentpractice at oppedahl-lists.com> wrote:
>>
>>> How close are you to the 30-month deadline?  Do you have 1 day?  Can you
>>> correct the applicant name tomorrow at WIPO?  (Under 92bis PCT — I am sure
>>> others will correct me)
>>>
>>>
>>>
>>> On Sep 25, 2025, at 5:25 PM, Karen S. Canady via Pct <
>>> pct at oppedahl-lists.com> wrote:
>>>
>>> We have been asked to file a US National Stage on short notice and now
>>> see that the priority provisional was filed in the name of “The University
>>> of X” whereas the PCT 101 identified the applicant as “University of X”.
>>> When you google the university, it states that the legal name is “The
>>> University of X” and that their “preferred name” is “University of X”.
>>>
>>> We try to always ensure the Applicant name is the same in both
>>> documents, but here we are. Does anyone know of TYFOIL or other issues that
>>> make this a problem? If so, what is the best version of their name to use
>>> for the US National Stage entry? We plan to stick with the name as used in
>>> the PCT, but wondering if there is any corrective action we should be
>>> taking.
>>>
>>> Karen S. Canady *|* Partner
>>>
>>> canady + lortz LLP
>>> <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/slN-XhF5sMTwoGcXDnkI4e-zwBySKZwcvS9p3rcr08Kl2W0oxVfRuN68hSKy3Ul1UYSq4vuJLec-r92xjAb-AwZUX7B1XA3-RVYXaW4WKOxxQyAT1Iu5WVusurjreZ0Wdz6P2Ec2OA9LZqoqpu1HrcFhzGN3V-7zdZfLetJsanj1CPM6-IP8iDNEuNwO1N-XJn6g4qjjd1sB47iT19VEdMdIquTeWtWmAN9GOFrSSiPfC5LCNjHVjuzMM-kVu32i_u8mCkIa3OgXHkqJrhauAHPf6bnIEg>
>>> 3435 Wilshire Blvd, Suite 1400
>>> Los Angeles, CA 90010
>>>
>>> T: 310.966.9400
>>> F: 909.494.4441
>>>
>>> karen at canadylortz.com <jane at canadylortz.com>
>>> www.canadylortz.com
>>> <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/7qld_kCLTjodhT0H3KbI9sx8XAjhMZ6-fDDg5IOvqOP4azyTOpx6IQZCDQhV1CPUO_Owbmc7bISZ_IOgubFBzDLg1EnPdHjOo1v_OmsMIGvcyWHs6sZ39edSLgR6au3LUJev90WtyUTJ54yetHHBDM6Ie54b5CxvnOCtZkgRCsItVDLVON3ubl2UmdOZB741pAKRD3w9DcXQq-GCuQFVLSlQNrSEUt5e7UFwK07ebcrUSqcuscSIYejz-yS37FehdtZ6tgf-7HfPvR_qxOSUcYQvyJgTow>
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