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

[Benjamin Keim]

Hi Rick,

Thank you for the useful information. You mention correcting both the provisional patent application and the PCT application by naming both the university and the company as applicants. However, I understand that is not possible to change the applicant once a provisional patent application had expired. How would one go about changing the applicant for an expired provisional?

-Ben

From: Rick Neifeld <richardneifeld at gmail.com>
Sent: Wednesday, February 26, 2025 3:16 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Benjamin Keim <ben at newportip.com>
Subject: Re: [Pct] Change of applicant in PCT application --> effect on Paris Art. 4 right of priority

Ben - The existing priority case law is covered in my book, Law Regarding Patents.
You said " the provisional application from which the PCT claims priority has only Company A as the applicant. " .
You said "I did not know this when originally working on the applications and so filed in the name of Company A."  I take that to mean you filed both the provisional and the PCT application naming company A as the applicant.



"My client and a university did joint research. Their research agreement says the parties shall jointly hold title to all inventions."  - This "shall jointly hold title to all inventions." does not use present tense assignment language, a la Federal Circuit "automatic assignment" law.  That sounds like an equittable title agreement, not an assignment. UK courts have spoken to whether the Paris right of priority accrues to equitable title.  EPO has refused parol evidence to discount a person named as an Applicant in a priority application. The EPO concluded that a Paris article 4's "any person" referred to the named applicant of a US provisional application, regardless whether the named applicant had the legal right to effect the provisional application filing.

The EPO and UK legal conclusions are arguably inconsistent.  At least their reasoning regarding parol evidence is at odds.

 "I would prefer just to keep everything in the name of Company A and let them work out a license." - A license would be contrary to the existence of an equitable title.

 "I believe I can change the applicant in the PCT application from Company A to Company A + University B with a rule 92bis request. " - Noted.

"The research agreement should provide evidence of joint ownership." - The research agreement provides evidence of equitable title.  Rule 92bis.1 does not require proof of ownership of a newly named applicant to effect a change adding the newly named applicant as such.

You did not mention the option that aligns the rights with the facts, which would be to correct both the provisional application and the PCT application by naming both the university and the company as applicants.

As to your proposal to add the university as an applicant only to the PCT application, See Schaeffler Technologies GmbH & Co. KG v. Porsche AG, T 1933/12 (EPO Board 2/21/2014) ("As far as the board is concerned, Article 87 (1) EPC does not preclude the (individual) applicant for the first application from sharing his right of priority with a third party by filing an application claiming priority with him," as  translated from German.)







On Wed, Feb 26, 2025 at 5:23 PM Benjamin Keim via Pct <pct at oppedahl-lists.com<mailto: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


--
Pct mailing list
Pct at oppedahl-lists.com<mailto:Pct at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com


--
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com<mailto:RichardNeifeld at gmail.com>;
This is NOT a confidential and privileged communication.  If you are not the intended recipient, please delete this email and notify the sender you have done so.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20250227/137d8d1c/attachment.htm>