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

[David Boundy]

I'm not following completely, but here are a few general principles --
     -- this is always an issue of national law.  You could well do
something to a PCT application that is just fine when you do your U.S.
national phase entry, and has already been incurably fatal injury in
Europe.  Europe seems to be the strictest jurisdiction, so ask your EP
counsel.
     -- "assignee" and "applicant" are two entirely different things.  Life
gets nasty and brutish if you allow them to be different for extended
periods of time, but there's no reason they can't diverge for some period.
     -- Article 4 applies only on application filing date.  As long as you
have "applicant" the same the day before and after each filing event, you
can change all you want in between

On Wed, Feb 26, 2025 at 5:21 PM Benjamin Keim via Pct <
pct at oppedahl-lists.com> wrote:

> 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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> Pct at oppedahl-lists.com
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>


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