(1) Addendum to practical advice published in PCT Newsletter No. 10/2012: Situation where it may still be beneficial to indicate the inventor(s) as applicant(s) in an international application (Part II)
Reference is made to the “Practical Advice” article that was published in PCT Newsletter No. 10/2012. This article discussed situations where it might be beneficial to indicate an inventor in an international application as applicant for at least one of the designated States, despite the fact that, following recent changes to the national law of the United States of America, it is no longer a requirement for the inventor to be indicated as an applicant for the purposes of the US designation.
Your attention is drawn to the fact that, in order to include any person as an applicant in respect of an international application, that person must have the right to file the application. One situation where this might not be the case would be if the inventor had already assigned the rights for the invention to an applicant, for example to the company that he or she worked for, before the international application is filed.
Please bear in mind that the rights of the “main” applicant in a particular situation must be carefully considered, and it should be ensured that that applicant approves the naming of any additional person as applicant and understands all the legal implications of such a “joint” filing.
(2) Indication of the inventor’s name and address in the request form
Q: I will soon be filing an international application in respect of which there is a corporate applicant and one inventor. Now that it is no longer necessary to indicate the inventor as applicant for the purposes of the designation of the United States of America, is it possible to omit the indication of the inventor in the international application in order to avoid publication of the inventor’s name and address, and then to furnish that information in the national phase before those designated Offices which require it?
A: Even though, following the recent changes that have been made to the U.S. national law, the inventor no longer needs to be indicated as an applicant in the PCT request form for the purposes of the designation of US, and even though it is not a requirement under the PCT to furnish the name and address of the inventor in order to be accorded an international filing date, it is nevertheless strongly recommended that this information be included in the request upon filing. Since most designated (or elected) States require that the inventor’s name and address be furnished at some point in the application process, it is a matter of best practice to include them in the request upon filing, in order to save the time that it would otherwise take to furnish the information to each designated Office (DO) (or elected Office) in the national phase.
The requirements regarding the time when the name and address of the inventor must be given vary from Office to Office. Annexes B1 and B2 of the PCT Applicant’s Guide indicate, for each PCT Contracting State or intergovernmental organization which has provided this information to the International Bureau (IB), the time when the name and address of the inventor must be given if that State or organization is designated1. Although there are a few DOs which do not require the name and address of the inventor at all2, the majority of DOs stipulate that the name and address of the inventor must be furnished in the request, but that if that information is missing from the request at the expiration of the applicable time limit under PCT Article 22 (or 39(a)), they would, nevertheless, send an invitation to the applicant to furnish that information within a time limit specified in the invitation. Note, however, that there may be some DOs which may not necessarily send such an invitation, some which may charge a fee for adding the name and address of the inventor in the national phase, and some which do not allow any extra time for doing so. In order to avoid forgetting to furnish the name and address of the inventor upon entry into the national phase, or possibly having to pay fees for doing so, it is better to furnish that information upon filing.
If, for some reason, the inventor does not wish to be named in a particular international application, you could, even though it is not generally recommended, omit the information on the inventor from the request. Note that, if you do this, the receiving Office would, in the interest of the applicant, normally bring to your attention the fact that the name and address of the inventor is not indicated in the request. If you are using electronic filing software such as PCT SAFE, you will also be given a corresponding warning message. If you take no further action at that time, the processing of the application would simply continue, and the application would be published without the name and address of the inventor and, as mentioned above, the majority of the DOs would accept the furnishing of that information later, upon entry into the national phase. You should, however, check the corresponding requirements carefully with those DOs before which you wish to enter the national phase.
Note that, if the name and address of the inventor are furnished prior to the completion of technical preparations for publication, the name (but not the address) of the inventor will be made publicly available on PATENTSCOPE on the “PCT Biblio. Data” tab of the international application concerned (see PCT Rule 48.2(b)(i)) at the time of publication of the international application (it is not possible under the PCT to request that certain information be excluded from publication). It used to be the case that the address of the inventor was also made publicly available on the bibliographic data tab but, since January 2009, in response to privacy concerns, the address data of the inventor(s) is no longer displayed on that tab, with the effect that personal address data is no longer indexed or displayed by Internet search engines. However, the inventor’s address can still be viewed, in image format only, on the front page of the published international application, as well as in other documents available through the “Documents” tab of PATENTSCOPE, for example, on any declaration as to the identity of the inventor under PCT Rule 4.17(i)). It also remains possible to conduct searches in the inventor address fields of PATENTSCOPE.
If, during the international phase, you intend to file a declaration of inventorship under PCT Rule 4.17(iv), which must include the inventor’s name and address, that declaration will, in accordance with PCT Rule 48.2(x), be published on PATENTSCOPE, provided that the declaration is received prior to the completion of technical preparations for publication. It is recalled that you always have the option of filing the declaration of inventorship in the national phase.
If the name and address of the inventor are furnished after international publication, but prior to 30 months from the priority date (the time limit for requesting the recording of changes under PCT Rule 92bis), only the name of the inventor would then be included in the bibliographic data tab of the application concerned. The inventor’s name and address would also be available by viewing Form PCT/IB/306 (“Notification of the Recording of a Change”) issued by the IB under the “Documents” tab, but only in image format.
If you are concerned about the publication of the inventor’s address, in particular, one possibility is to include only the name of the inventor, and not the address, although the latter would still have to be furnished to the majority of the DOs in the national phase. Note, however, that there is no requirement under the PCT that the address indicated in the request form be the inventor’s “home” address (PCT Rule 4.4(c)); it is normally possible to use the address of the inventor’s employer instead. If this is not possible or desired for any particular reason, it would be a matter for the inventor (and a matter of the national law of the relevant DOs) as to what address could be indicated. In any event, for the purposes of the international phase, the IB would not object to the use of an address which is not the inventor’s home address.
Also, for the purposes of indicating the inventor’s address on the declaration of inventorship, note that it is the law of the United States of America which governs the contents of that declaration and which provides for consequences of non-compliance with requirements of the U.S. national law, and it would be advisable to contact the USPTO for questions regarding the U.S. law and practice regarding the inventor’s address. Please note, however, that the USPTO in its capacity as DO has confirmed that it would accept a mailing address where the inventor customarily receives mail, which may include an address where the inventor works or a post office box.
As indicated above, according to the information provided to the IB, with the exception of very few Offices, the majority of the DOs will eventually require the name and address of the inventor. It is therefore strongly recommended that, in order to avoid any problems or delay in the national phase, this information be included in the request at the time of filing, unless there are special reasons for not doing so.
1 As this information is as provided by the national (or regional) Offices concerned, and every effort is made to keep this information up-to-date, you should check directly with the Offices concerned for more specific information.
2 According to the latest information provided by the Offices concerned, the Austrian Patent Office, the Israel Patent Office and the Industrial and Commercial Property Office of Morocco, in their capacities as DOs, require neither the name nor the address of the inventor; the Spanish Patent and Trademark Office, in its capacity as DO, does not require the address of the inventor.