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The intersection of PCT and AIA: important changes in 2012

The America Invents Act significantly changes US patent law and has been a major topic of discussion in the patent community for months. There is one aspect of these changes that does not get as much focus – the impact on PCT applications. The following is a brief outline of the major effects of the AIA on PCT applications that may warrant adjusting your current patent strategies.

  • Non-inventors may now be U.S. patent applicants if the international filing date of the patent application is after September 16, 2012. With this change, PCT applicants can be the employer without need for the inventor to participate in patent prosecution. This can be beneficial to employers when employees leave the company and are difficult to locate or obtain cooperation in execution documents. Patent applicants will want to consider if they want to claim priority to earlier filed patent applications if they would benefit from this provision. They may opt to forego a priority claim to qualify for the new laws. In addition to adopting employee policies and executing confidentiality and invention assignment agreements with all employees, the safest practice will be to execute an assignment from the inventor to the employer of all rights in the invention and patents incorporating the subject matter as soon as the patent disclosure is made. Executing a second assignment after the patent application is filed may also be a best practice.
  • For PCT applications filed after September 16, 2012, the national filing date (371(c) date) is no longer the date the oath/declaration is received – it is when the national fee is paid and the English translation is filed for the PCT application (if not filed in English). Many patent applicants who routinely file and pay within 30 days, or later file translations, will want to update their practices so that filing deadlines are not missed under the new rules.
  • Inventorship and assignees are changed with an ADS simultaneously filed with the oath and declaration. While ADS used to be “recommend but optional,” it is now a requirement with new filings in most circumstances.
  • New oath and declaration language requires applicants to use the updated forms newly available on the WIPO and USPTO website.
  • A substitute statement can be filed where an inventor cannot be reached, dies or becomes incompetent, eliminating the cost and delay of petitions and proceedings for employers and estate fiduciaries.
  • A new procedural rule now requires that domestic benefit claims must be in the ADS. The former practice of asserting priority in the first sentence of the specification will no longer be effective. Under current practice, the first sentence of a non-provisional domestic patent application is typically something like “This non-provisional patent application benefits from a claim of priority to provisional patent application USSN xxx filed May 1, 2012.” Thus, patent applicants will need to change their utility patent specification templates and include an ADS with each application filing. This new method for claiming priority will eliminate the need for specification amendments when priority was claimed to a patent application that later issues as a patent during the prosecution of the application claiming priority.
  • Some pro se patent applicants or foreign patent applicants submit applications that are unclear to the Patent Office upon receipt, especially when determining if the enclosed patent application is intended to be a domestic or foreign filing. If it is unclear whether it is a domestic or PCT application (there is conflicting information in the application), PCT application will now be presumed by the USPTO. It is important to be sure that patent applications are written in proper format to avoid confusion.