[Pct] naming the applicant at national/regional entry

[welched123 at gmail.com]

It seems to me that some time ago there was a discussion on these listserves
of the need for the Applicant to be the same on the priority document as in
the PCT filing.  If so, perhaps that played into the decision to file the
PCT in the name of both A and B.  As to the "confirmatory assignment," I
don't see anything in the fact pattern that suggests that an actual
assignment took place between A and B: merely an agreement as to who is
named on the applications.  Perhaps whatever document that reflects the
agreement as between A and B also discusses ownership and rights to the
invention.  It may be that A remains a co-owner and B merely assigned its
rights in the invention, but not the total rights to the invention.

 

Ed Welch

IP&L Solutions

 

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

 

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.

 

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

 

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

 

4.	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.

 

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

 

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

 

7.	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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