PCT changes due to come into force

As agreed at the Assembly of the Patent Cooperation Treaty (PCT) Union meeting in October, amendments to the PCT Regulations will come into force on January 1, 2013.

The changes, which have taken the 2011 America Invents Act (AIA) into account, are hoped to simplify patent application procedures in PCT contracting states.

Amendments will be made in a range of jurisdictions, including changes in application fees and methods of patent application transmission.

In response to the AIA, the Union has deleted the condition by which all patent applicants must be inventors in order to file international applications that designate the US.

The name and address of the inventor may remain undisclosed for a designated period of time. WIPO’s latest newsletter on the subject says:

“If the data concerning the inventor is missing at the expiration of the time limit under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.”

Harry Lamb, a partner at Marks & Clerk, said that the new regulations ensure that applicant names for patent filings in the US “reflect... the true owner at all stages."

He added: “This could have an advantage in terms of record keeping as it will allow a common applicant to be shown across an entire portfolio. It also eliminates confusion.”

However this amendment may not simplify the overall patent filing process in the US. Lamb continues: “It will continue to be necessary to carefully and accurately identify the inventors and to ensure that the applicant derives its right to file an application from them. It will still be necessary to file a Declaration of Inventorship once the application has entered the national phase in the US.”

Click here to see the rest of the newsletter, which details the changes.