[Patentpractice] Inconsistent name between priority doc and PCT re "The University of X" vs "University of X"
Carl Oppedahl
carl at oppedahl.com
Fri Sep 26 21:38:11 UTC 2025
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below, in extreme detail.
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attend, my class. There are still empty seats in the classroom.
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On 9/26/2025 3:29 PM, David Boundy via Pct wrote:
> 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
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>> www.canadylortz.com
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