[Pct] naming the applicant at national/regional entry

Thu Feb 15 15:38:30 EST 2024

Yes, that's a good point. There is a lot that hinges on what is meant by "[a]greement between company dated prior to PCT Application filing date states that PCT application shall be filed in the name of Company B only."

I interpreted the part about company A not being named as meaning company A no longer has any ownership rights. However, if that is incorrect and company A still has ownership rights separate from being named as the applicant, then I don't know how this should be handled. Also, much will depend on the applicable national law in each country.

At least in the US, it appears that it is not possible to name only one of two applicants having an ownership interest in an application (from MPEP 605.01(I)):
If an assignee is filing an application under 37 CFR 1.46, but the assignee is not the assignee of the entire right, title and interest in the application, then the assignee would need to be named as the applicant under 37 CFR 1.46  together with the other party who has an ownership interest. For example, if there are two joint inventors, and one inventor has assigned his rights in the invention to the assignee, but the other inventor has not assigned his rights in the invention and is under no obligation to assign his rights, the assignee and the other inventor should be identified as the applicant in the applicant information section of the application data sheet. See 37 CFR 3.71. Under the example provided, the assignee would have an undivided interest in the entirety of the one inventor’s interest but would not be the owner of the entire right, title and interest in the invention. Because of this, the assignee cannot be named as the sole applicant in the application. All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office. See MPEP § 301.

Scott Nielson

801-660-4400

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

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.

  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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