AIA Brings Changes to PCT applications

As of September 16, 2012, the America Invents Act (AIA) allows entities (businesses) to be applicants if they are an assignee or employer of the inventor. However, if you have foreign entities, you may need to name one or more inventors as applicants to satisfy the citizenship/residency requirements of the receiving office. For example, while a Canadian company can be a patent applicant, a U.S. citizen or resident must also be named an applicant if the USPTO is being used as a receiving office. There is a new PCT form (Box III has changed) to accommodate the AIA changes in the U.S. patent law.

AIA creates a third party submission process in the U.S. WIPO has also started a submission process for third parties. This process allows for anonymous submissions of prior art or arguments against patentability of pending PCT applications. When compared to U.S. third party submission procedure, the WIPO has much less stringent requirements for showing the relevance of the submitted prior art. Some believe the procedure will not be utilized much, while others fear it may open the door for abuse and increase the costs for applicants having to respond and defend against those third party submissions.

Leave a Reply

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.