[Pct] naming the applicant at national/regional entry

[Scott Nielson]

I would create a document called a "confirmatory assignment" from Company A directly to Company C listing the priority application(s) and the PCT application. I would include a short paragraph referencing the first assignment from A to B and explaining that this new assignment is being executed to further implement the intent of the parties and transfer any potential rights still remaining in A to C who is the successor in title to B.

Once this is done, and assuming you have time, file a request in the international stage to change the applicant to C (you will need a PCT power of attorney from C). When you file national phase applications, include copies of all the assignments in your filing instructions to regional/national counsel so they can do whatever is necessary, if anything, to make the applicant change effective in the regional/national office.

Alternatively, you might be able to just delete company A from the international application under the theory that it had no rights in the application and was mistakenly listed. However, the legal effect of listing company A and removing it is unclear and will vary from country to country (e.g., for purposes of the US, I don't think it has any effect).


Scott Nielson

801-660-4400

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Subject: [Pct] naming the applicant at national/regional entry

A listserv member asks to post anonymously ...


I have a question for the group about naming the applicant at national/regional entry.



Here’s the fact pattern:



  1.  Priority Application is filed in name of Company A and Company B.



  1.  PCT Application filed in name of Company A and Company B.



  1.  Agreement between company dated prior to PCT Application filing date states that PCT application shall be filed in the name of Company B only.



  1.  Same Agreement between Company A and Company B states that national/regional stage applications are to be filed in the name of Company B; Company B will own all applications/issued patents.



  1.  Company B converted from a CORP to an LLC and changed its name to Company B LLC.



  1.  Company B LLC assigned its rights to Company C.



  1.  So, it seems that Company A should not have been an Applicant on the PCT Application at all.



I would like to file all national/regional stage applications in the name of Company C.



Can this be done?



If so, how best do I accomplish this task?



Please consider the situations where the Agreement between Company A and Company B is (1) has a clear assignment of priority rights under Paris, or (2) is completely silent on priority rights,.



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