Intellectual Property and the America Invents Act

On 16 September 2011, the United States of America (U.S.) enacted changes to its patent law under the Leahy-Smith America Invents Act (AIA). The AIA changes, among other things, who is entitled to be an applicant in U.S. national applications.

For international applications filed on or after 16 September 2012, inventors no longer have to be indicated as applicants for the purposes of the U.S. designation. Instead, the assignee or other person to whom the inventor is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, may be indicated as the applicant for the U.S. designation.

Does a U.S. national phase application still require a declaration of inventorship?

Yes, a declaration of inventorship is still necessary, though the standardized text of the PCT declaration (contained in Section 214 of the PCT Administrative Instructions) changed as from 16 September 2012. For international applications filed on or after 16 September 2012, the new standardized text of the declaration will have to be used, otherwise the designated Office of the U.S. will not accept those declarations in the national phase. The new standardized text of the declaration is in the updated request form and has been incorporated into PCT SAFE and other e-filing software. Where an old version of the filing software, which does not yet contain the new standardized text, is used, it is recommended that the applicant furnish the declaration of inventorship after filing the application, by completing the relevant page of the 16 September 2012 request form. This can be submitted directly to the International Bureau, preferably using the “Upload Documents” function available in the ePCT service. Alternatively, applicants may obtain the appropriate declaration form from the website of the U.S. Patent and Trademark Office (USPTO) and submit the executed form directly to the USPTO at the time of national phase entry.

Have the PCT Regulations also been modified?

The PCT system contained provisions in its Rules to deal with the requirements in U.S. law that applications, filed before 16 September 2012, had to be filed in the name of the inventor. As a result of the AIA changes, a number of provisions were no longer necessary for the purpose of complying with U.S. national law when designating the U.S. in an international application. As a result, amendments to the PCT Regulations have been adopted by the PCT Assembly in October 2012 and entered into force on 1 January 2013.

The Administrative Instructions, Receiving Office Guidelines and certain PCT forms have also been modified to reflect the change in U.S. law.

What happens if I file a PCT application using an old request form/electronic filing software version and indicate an inventor as applicant for the U.S. only and an applicant as applicant for all designated States except the U.S.?

If, on or after 16 September, 2012, inventors are indicated as applicants for the U.S. only (and applicants are indicated as applicants for all states except the U.S.), then the applicant will receive a notice from the Receiving Office (PCT/RO/132) or the International Bureau (PCT/IB/345) referring to this change of U.S. law and the possibility of requesting the recording of a change under Rule 92bis.

What happens if I file a PCT application and use the old wording for the declaration of inventorship?

The designated Office of the U.S. will not accept the old wording for declarations of inventorship for international applications filed on or after 16 September 2012. Therefore, the applicant will receive an invitation (Form PCT/IB/370) from the International Bureau to correct the declaration within 16 months from the priority date (PCT Rule 26ter.2(a)). Where an acceptable declaration of inventorship has not been timely provided in the international phase, the applicant is required to furnish one in the national phase. The payment of a surcharge fee will be required if the declaration of inventorship is not filed on or before the date of commencement of the national phase.

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