One PCT application, two different applicants

Started by Patentstudent, 06-27-16 at 06:07 PM

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Patentstudent

Can somebody help me on this one.
Let's presume Company A filed a patent application in Germany, followed by a PCT application within the priority year.
Now based on the PCT application Company A intends to enter the national phase in the US, Canada, Great Britain, France, Italy and Spain.

Company A has an agreement with Company B that it will grant Company B the right to become the owner of the patent rights in Australia and South-Korea.
My question is:
Is there a way that under the PCT application filed by Company A it can allow Company B to directly file the national patent applications in Australia and South-Korea?
Or, will Company A itself have to file the applications in Australia and South-Korea and then transfer these national applications to Company B so that Company B becomes the applicant?

Thank you.

mersenne

QuoteIs there a way that under the PCT application filed by Company A it can allow Company B to directly file the national patent applications in Australia and South-Korea?

There may be a way (many of the PCT-related things I've filed or seen have fields for "applicant" separate from "inventor") but I think you'd need to confirm in each country.  If this is a one-time thing, it seems that it would be more efficient to do it the straightforward way: have Company A file the NP applications and then transfer them to Company B.  That will save you the research costs, risk from doing a non-standard procedure, and it's certain that you won't save any money by having Company B file directly (if you could save money that way, then everybody would set up shell companies to do it!)

I know this doesn't directly answer the question, but part of a lawyer's responsibility is to get a good result efficiently, which includes not chasing down ratholes without necessity.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

Patentstudent

Thank you for your reply.
I agree with you that it would normally be better to follow the safe route.
However, in this case there are compelling reasons (about which I can't share information on the forum) to let Company B file the national phase applications directly, if possible.

Rabid Levity

#3
Quote from: Patentstudent on 06-27-16 at 11:18 PM
... there are compelling reasons ...to let Company B file the national phase applications directly, if possible.

Hmm... well, assuming A has proper assignments from the inventors for the priority and PCT application filings, can you have A assign all its right/title/interest to B for only AU/KR in the invention described in [identification of DE and PCT apps]? 


As an aside, I recall seeing situations (UK or DE or maybe EPO) where argument were made that such a local-owner-filed app was not entitled to the original priority claim because the assignment gave that local owner title to the invention in the designated countries and the right to file in those countries, but it did not specifically call out the right to claim priority back to the original filing, which was still owned by the original applicant along with whichever countries it had kept to itself.  So while it is always a good idea to have a separately recited rights to claim priority back to priority apps in your assignments, in situations like this where for some countries where there is a break in ownership between original filings and later national-level filings, it could become very important.


I could not find the case I was thinking of but here is a blog entry by Nutter McClennen & Fish LLP mentioning the distinction between owning an application vs. owning right to claim priority.

http://www.lexology.com/library/detail.aspx?g=5118c921-8c93-46be-88fb-0d3f0e00f4fb
"Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it. This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. "

Patentstudent

Thank you, Rabid Levity.
Your reply and the link to the blog entry by Nutter McClennen & Fish LLP are very helpful.



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