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

Wed Feb 26 22:07:31 EST 2025

Check with EP counsel first.  I am not licensed to have an opinion, but I
can suggest you ask the question of someone who is licensed.  The question:
(a) on your facts as they exist, is there a problem?  (b) if there is a
problem, would it do any good to retroactively change to "applicant" of a
parent, or is the problem locked in if the "applicant" mismatches between
parent and daughter on the day of filing the daughter?   (c) If they
matched, then is there anything to care about the parent?

On Wed, Feb 26, 2025 at 9:36 PM Rick Neifeld via Pct <pct at oppedahl-lists.com>
wrote:

> Ben - Why do you think it is "not possible to change the applicant once a
> provisional patent application ha[s] [sic] expired"? 37 CFR 1.76(c)(1)
> contains no such limitation.
>
> "How would one go about changing the applicant for an expired
> provisional?" - I would review the relevant rules, file a suitable
> 1.76(c)(2) correction, and inquire with the office of petitions, ebc, and
> the application assistance unit to see about PTO processing of the
> correction. I think no petition is required, but I would have to check.  In
> any case, you can expedite processing by petitioning for expedited
> processing; the PTO always likes it when people file petition fees to speed
> things along. Good luck.
>
>
>
>
>
>
> On Wed, Feb 26, 2025 at 7:52 PM Benjamin Keim <ben at newportip.com> wrote:
>
>> 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> 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
>> 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;
>>
>> 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.
>>
>>
>>
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>

-- 

<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20250226/dafcaf43/attachment.htm>