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03.08.2012

Changes to PCT-Applications in view of America Invents Act

Essential changes to the U.S. Patent Law were introduced with the enactment of the Leahy-Smith America Invents Act (AIA) on September 16, 2011. The impact of the AIA is not limited to national patent applications filed with the U.S. Patent Office, but also concerns international patent applications filed under the Patent Cooperation Treaty (PCT).                       

Previously, it was necessary to specify the inventor as well as the actual applicant in PCT applications as applicants since U.S. patent applications could only be filed by the inventor and not by his successor in title. At a later stage a transfer of rights from the inventors to the actual applicant could be arranged.

This obstacle is made obsolete by the AIA. Thus, in PCT applications filed on or after September 16, 2012 the successor in title may also be named as the applicant for the purposes of the U.S. designation. It is an additional effect that some formal acts like abandonment of PCT applications are facilitated, since it is no longer necessary to provide signatures of all inventors.

However, the requirement of filing the declaration of inventorship in the proceedings before the USPTO remains. As such it is still not possible to proceed in the U.S. without the inventor’s signature.

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