Corporate Power Of Attorney

Candidates Across PCT should continue to file proxy inventors,
Despite changes in the Regulations and
Corresponding changes to the regulations of the United States Patent

I. Introduction

II. Competent Authority PCT, including the latest amendments thereto

III. Changes in U.S. regulations regarding changes to the Regulations under the PCT

IV. Relevant U.S. statutory authority does not change, and the inventors must authorize the filing of a PCT application

V. The legal effect of filing a PCT application without the express permission of the inventor at the time of filing

A. Does the USPTO 35 USC 373 apply?
B. Impact on U.S. patents issued on PCT applications in which the authorization of the inventor to file the PCT application is not apparent

VI. What could or should the USPTO do to solve this problem?

VII. What practitioners can do now to correct the PCT applications filed without permission of the inventor?

VIII. Conclusion

I. Introduction

The PCT Regulations were recently amended in order to relieve the oppressive requirement to file a proxy of each inventor when filing a PCT application. However, U.S. domestic law has been amended to relieve the requirement that the inventors authorize the filing of a PCT application. Therefore, filing a PCT application without the express permission of the inventor, for example by proxies, creates an unnecessary risk of loss of patent rights of United States.

recent amendment of the Regulations and amendments to the regulations of the United States appear to have enabled practitioners to by-pass the burden of signing by the inventor to obtain a proxy from the applicant company. At least that's how it appears in the following relevant sections of the PCT, the recent changes to the PCT Regulations, and the commentary on the new 37 CFR 1421. However, the language of 37 CFR 1421 and 35 USC 373 does not support this conclusion.

I saw the competent authority and modifications below, then examine the implications of PCT applications filed without express permission by the inventors. Finally, I suggest remedial action by the USPTO, the U.S. Congress, and practitioners could take to remedy this situation.

II. Competent Authority PCT, including the latest amendments thereto

PCT Article 14 (1) provides in pertinent part, my emphasis added:

Article 14 - Irregularities in the international application

(1) (a) The receiving Office checks whether the international application contains defects following, that is to say:

(I) it is not signed as provided in the Regulations;

(Ii) it does not contain the prescribed indications concerning the applicant;

(Iii) it contains no title;

(Iv) it does not contain a summary;

(V) it does not conform to the extent provided in the Regulations prescribed physical requirements.

Thus, the regulations promulgated under the authority of PCT PCT Article 14 (1) (a) (i) controls the signatures of the DS should require.

26.2bis PCT Rule (as amended and in force from January 1, 2004) is the regulation to which PCT Article 14 (1) (a) (i). PCT Rule provides in relevant part 26.2bis, my emphasis added:

26.2bis control requirements of Article 14 (1) (a) (i) and (ii)

(A) For the purposes of section 14 (1) (a) (i), if more than one applicant, it shall be sufficient.