[Pct] Can applicant name for US national-phase entry differ from applicant name for PCT application?

[Krista Jacobsen]

Ooooh, Scott, that sounds awful. Thanks to you and Roger for your
responses. Roger, great idea on the 92bis the day before.

I LOVE THIS LISTSERV!

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com


On Tue, Jun 17, 2025 at 5:46 PM Scott Nielson <scnielson at outlook.com> wrote:

> You should not list a different applicant on the ADS when you file a 371
> application (as I found out the hard way). You need to list the applicant
> listed on the PCT application and then follow the requirements to change
> the name of the applicant.
>
> In my case, the PCT application listed the inventors as the applicants for
> purposes of the U.S. I listed the company as the applicant in the ADS when
> I filed the 371 application and received a filing receipt acknowledging the
> company as the applicant. Later, after I paid the issue fee, I received a
> notice that the USPTO mistakenly granted a request to change the applicant
> and it had reverted the change so that the inventors were now the
> applicants. I had to reply to the notice with everything required to change
> the applicant.
>
> *Scott Nielson*
>
> 801-660-4400
> ------------------------------
> *From:* Pct <pct-bounces at oppedahl-lists.com> on behalf of Krista Jacobsen
> via Pct <pct at oppedahl-lists.com>
> *Sent:* Tuesday, June 17, 2025 6:22 PM
> *To:* Pct at oppedahl-lists.com <pct at oppedahl-lists.com>
> *Cc:* Krista Jacobsen <krista at jacobseniplaw.com>
> *Subject:* [Pct] Can applicant name for US national-phase entry differ
> from applicant name for PCT application?
>
> I am preparing the paperwork to enter the national phase in the U.S. from
> a PCT application.
>
> When the PCT application was filed, the name of the company was "Oldname."
> The inventors executed an assignment to Oldname. After the PCT application
> was filed, the company changed its name to "Newname." It's the same entity,
> just with a different name.
>
> As Oldname doesn't exist anymore, I want to name Newname as the
> applicant in the ADS that will accompany the national-phase filing in the
> U.S.
>
> Will there be any USPTO snafus because the applicant of the PCT
> application does not match the applicant named in the U.S. national-phase
> entry papers? I couldn't find anything in the MPEP that addresses this
> situation, so I wanted to check with the brain trust. I'm hoping someone
> has had this situation before, or perhaps a situation in which the PCT
> application was assigned to a different entity prior to national-phase
> entry, and you named the new owner as the applicant.
>
> It seems like this shouldn't be an issue, but the USPTO seems to have
> endless ways to surprise me.
>
> Thanks in advance.
>
> Best regards,
> Krista
>
> ------------------------------------------
> Krista S. Jacobsen
> Attorney and Counselor at Law
> Jacobsen IP Law
> krista at jacobseniplaw.com
> T:  408.455.5539
> www.jacobseniplaw.com
>
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