Pct Applicants Everywhere Should Continue to File Powers of Attorney From the Inventors

PCT Applicants Everywhere Should Continue to File Powers of Attorney from the Inventors,

Notwithstanding Changes to the PCT Regulations and

Corresponding Changes to U. S. Patent RegulationsI. Introduction

II. Relevant PCT Authority Including Recent Changes Thereto

III. Changes in U. S. Regulations in Connection with Changes in the PCT Regulations

IV. Relevant U. S. Statutory Authority Has Not Changes, and it Requires that Inventors Authorize Filing of a PCT Application

V. The Legal Effect of Filing a PCT Application Without Express Authorization from the Inventors at the Time of Filing

A. Will the USPTO enforce 35 USC 373?

B. Impact on U. S. Patents Issued on PCT Applications in Which the Inventor’s Authorization to File the Pct Application Is Not Apparent

VI. What Could or Should the USPTO Do to Address This Issue?

VII. What Can Practitioners do Now to Correct PCT Applications Filed Without Authorization from the Inventors?

VIII. Conclusion

I. Introduction

The regulations of the PCT were recently amended for the purpose of relieving the oppressive requirement to file a Power of Attorney from each inventor when filing a PCT application. However, U. S. national law was not amended to relieve the requirement that the inventors authorize the filing of a PCT application. Therefore, filing a PCT application without express authorization from the inventors, such as via powers of attorney, creates an unnecessary risk of loss of U. S. patent rights.

Recent amendment to the PCT regulations and corresponding amendments to U. S. regulations appear to have enabled practitioners to by-pass the inventor signature burden by obtaining a power of attorney only from the corporate applicant. At least, that is how it appears by following the relevant PCT articles, recent changes to the PCT rules, and the commentary on new 37 CFR 1. 421. However, the actual language of 37 CFR 1. 421 and 35 USC 373 do not support this conclusion.

I outline the relevant authority and changes thereto below, and then examine the consequences of PCT applications filed without express authority from the inventors. Finally, I suggest corrective actions the USPTO, U. S. Congress, and practitioners could take to alleviate this situation. II. Relevant PCT Authority Including Recent Changes Thereto

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

Article 14 – Certain Defects in the International Application

(1)(a) The receiving Office shall check whether the international application contains any of the following defects, 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 does not contain a title;

(iv) it does not contain an abstract;

(v) it does not comply to the extent provided in the Regulations with the prescribed physical requirements.

Thus, PCT regulations promulgated under the authority fo PCT article 14(1)(a)(i) controls what signatures the ROs must require.

PCT Rule 26. 2bis (amended and in force as of January 1, 2004) is the regulation to which PCT Article 14(1)(a)(i) relates. PCT Rule 26. 2bis states in pertinent part, my emphasis added:

26. 2bis Checking of Requirements Under Article 14(1)(a)(i) and (ii)

(a) For the purposes of Article 14(1)(a)(i), if there is more than one applicant, it shall be sufficient that the request be signed by one of them.

(b) For the purposes of Article 14(1)(a)(ii), if there is more than one applicant, it shall be sufficient that the indications required under Rule 4. 5(a)(ii) and (iii) be provided in respect of one of them who is entitled according to Rule 19. 1 to file the international application with the receiving Office.

Thus, PCT Rule 26. 2bis allows a RO to accept a PCT application signed by only the corporate applicant.

III. Changes in U. S. Regulations in Connection with Changes in the PCT Regulations

However, treaties including the PCT are not self implementing under U. S. law. U. S. statutes and regulations must be passed to implement treaties to which the U. S. accedes. In response to the changes to PCT Rule 26. 2bis, the USPTO published rule changes at 68 FR 59881 (published October 20, 2003; effective 1/1/2004), but the USPTO did not (and could not) change relevant U. S. statutes. U. S. statutes are based upon Bills signed into law by the President, and they control over U. S. regulations. In particular, 68 FR 598883 left hand column states in pertinent part, my emphasis added:

Section 1. 421: Section 1. 421(b) is amended to remove reference to

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