[Pct] Change of applicant in PCT application --> effect on Paris Art. 4 right of priority

[Benjamin Keim]

I am trying to determine if the applicant can be changed in a pending PCT application without causing a problem with a priority claim to a provisional. I would like the answer to be "no" to keep things simple.

My client and a university did joint research. Their research agreement says the parties shall jointly hold title to all inventions. (I have counseled my client about the problems of joint ownership for US patents.) The research agreement is dated before filing of the provisional application.

I did not know this when originally working on the applications and so filed in the name of Company A. I would prefer just to keep everything in the name of Company A and let them work out a license. However, the university may wish to change the applicant on the PCT to also include them.

I believe I can change the applicant in the PCT application from Company A to Company A + University B with a rule 92bis request. The research agreement should provide evidence of joint ownership.

However, the provisional application from which the PCT claims priority has only Company A as the applicant. If I change the applicant on the PCT application, it would no longer be the same as on the provisional. Company A ≠ Company A + University B. This would create a SAOSIT problem between the provisional and the PCT application. Can this be addressed?

I thought this might be something that can be handled with declaration 3. But the PCT application has passed the 4/16 date and published. The 30-month date is in April. Even if a declaration could be filed, I am not sure what I would say. Something like:

The provisional application was filed in the name of Company A but at the time of filing the provisional application this invention was actually owned jointly by Company A + University B. So, Company A + University B is the successor in title to Company A because we should have listed Company A + University B from the beginning.

My apologies if this is a topic that has been well covered in previous posts.

-Ben


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