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PCT Newsletter 08-09/2013: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

The importance of ensuring that there is an applicant named who is entitled to file a PCT application (especially in view of the fact that inventors no longer have to be named as applicants)

Q: I have, in recent years, filed a number of applications on behalf of a company which has the nationality and residence of a State which is not a PCT Contracting State, along with applicant/inventors who are nationals of a PCT Contracting State. A few days ago I filed an application on behalf of that company for the first time since the entry into force of the America Invents Act, and, in view of the fact that inventors no longer have to be named as applicants for the purposes of the designation of the United States of America, the inventors mentioned above were not indicated as applicants, but simply as “inventors only”. Consequently, I have just received from the receiving Office Form PCT/RO/103 inviting me to correct the application, because the only applicant does not have the right to file an international application as it is neither a national nor a resident of a PCT Contracting State. What can I do?

A: A number of similar cases have been brought to the attention of the International Bureau since the entry into force of the America Invents Act. Although one of the effects of the Act was to facilitate the filing of international applications by removing the need to name the inventors as applicants for the purposes of the designation of the United States of America, you should now be even more careful to ensure that there is at least one applicant who, at the time of filing, is a national and/or resident of a PCT Contracting State. Otherwise, the application will not meet the requirements of PCT Article 11(1)(i), and therefore cannot be accorded an international filing date and will not be processed as a PCT application.

In your case, although your purported international application has been accorded a PCT application number and a date of receipt, it will not be accorded an international filing date unless the outstanding PCT Article 11 defect is corrected. The international filing date accorded would only be the date on which any correction is received by the receiving Office, and not necessarily the date of receipt of the application (see PCT Rule 20.3(b)(i)). Provided that you are in a position to correct that defect, you should therefore respond to Form PCT/RO/103 as soon as possible. This is of particular importance if you want to obtain a filing date for a first filing, or if you would like to claim the priority of an earlier application in respect of which the 12-month priority period will expire soon.

One course of action, provided that you have the approval of the corporate applicant, is to respond to the invitation by naming one or more of the inventors as applicants for at least one designation, and notifying the State of residence and nationality of those applicant/inventors. Your response to the invitation could include a substitute sheet of the request form containing an indication that the inventors are applicant/inventors, as well as an indication of their State of residence and nationality. If the inventors are to be considered as applicants for a specific designated State (or for specific designated States), this should be specified in the supplemental box of the request form. However, as stated above, changing the status of the inventors to applicant/inventors gives them rights in the application, and affects the rights of the corporate applicant, and thus this strategy should be carefully considered.

Provided that there are no other PCT Article 11 defects, the date of receipt by the receiving Office of the response to Form PCT/RO/103 would be considered as the international filing date, as that is the date on which the requirements under PCT Article 11 would effectively be met.

Although the following situation would appear not to apply in the case of your application, it can happen in certain circumstances that, in response to an invitation to correct a defect under PCT Article 11(1)(i), evidence can be submitted indicating to the satisfaction of the receiving Office that, in fact, the applicant had, on the date on which the international application was actually received, the right to file an international application, for example, because the residence and/or nationality had been erroneously indicated. In such a case, upon furnishing such evidence, the invitation would be considered to have been an invitation to correct a defect under PCT Article 14(1)(a)(ii) and PCT Rule 4.5, and the applicant would be able to correct this and maintain the date of receipt as the international filing date (see Section 329 of the Administrative Instructions under the PCT).

Note that, if you had filed the international application using PCT-SAFE (or a similar filing software, such as eOLF and ePCT-Filing (currently in pilot phase)), you would have received a warning message prior to submission of the application, and might have been able to avoid making the PCT Article 11 defect.