| PCT Applicants Everywhere Should Continue to | | | | Treaty). Thus, the Receiving Office cannot refuse |
| File Powers of Attorney from the Inventors, | | | | an international application on these grounds, since |
| Notwithstanding Changes to the PCT Regulations | | | | that application may contain designations of other |
| and | | | | countries in which such applicant is permitted to |
| Corresponding Changes to U.S. Patent Regulations | | | | file. [Page 18 lines 18-37.] |
| I. Introduction | | | | Thus, 35 USC 373 specifically requires that a PCT |
| II. Relevant PCT Authority Including Recent | | | | application filed in the international stage can only |
| Changes Thereto | | | | enter the U.S. national stage if it was filed, in the |
| III. Changes in U.S. Regulations in Connection with | | | | international stage, by someone qualified under |
| Changes in the PCT Regulations | | | | chapter 11 to file the application. Chapter 11 |
| IV. Relevant U.S. Statutory Authority Has Not | | | | specifies that only someone authorized by the |
| Changes, and it Requires that Inventors Authorize | | | | inventor can file their patent application. In |
| Filing of a PCT Application | | | | particular, Chapter 11 includes sections 35 USC 111 |
| V. The Legal Effect of Filing a PCT Application | | | | to 35 USC 122. These sections of the statue |
| Without Express Authorization from the Inventors | | | | includes numerous passages clarifying that the |
| at the Time of Filing | | | | applicant means the inventor, and generally that |
| A. Will the USPTO enforce 35 USC 373? | | | | the inventors must authorize that the application |
| B. Impact on U.S. Patents Issued on PCT | | | | to be "made" on their behalf. The statute does |
| Applications in Which the Inventor's Authorization | | | | not define "made." However, "made" in this |
| to File the Pct Application Is Not Apparent | | | | context clearly implies prepared and filed. |
| VI. What Could or Should the USPTO Do to | | | | 35 USC 115 defines "applicant" to be the inventor, |
| Address This Issue? | | | | stating "Oath of applicant. The applicant shall make |
| VII. What Can Practitioners do Now to Correct | | | | oath that he believes him-self to be the original |
| PCT Applications Filed Without Authorization from | | | | and first inventor of [the invention]..." |
| the Inventors? | | | | 35 USC 111(a)(1) makes it clear that preparation |
| VIII. Conclusion | | | | and filing of a patent application must be |
| I. Introduction | | | | authorized by the inventor/applicant, stating that |
| The regulations of the PCT were recently | | | | "Written application. An application for patent shall |
| amended for the purpose of relieving the | | | | be made, or authorized to be made, by the |
| oppressive requirement to file a Power of | | | | inventor...." |
| Attorney from each inventor when filing a PCT | | | | 35 USC 117/118 handle the exceptional |
| application. However, U.S. national law was not | | | | circumstances of an inventor being dead, |
| amended to relieve the requirement that the | | | | incapacitated, or wrongfully refusing to sign, in |
| inventors authorize the filing of a PCT application. | | | | which case, upon sufficient showing, another may |
| Therefore, filing a PCT application without express | | | | sign on behalf of the inventor. |
| authorization from the inventors, such as via | | | | Thus, barring exceptional circumstances, a U.S. |
| powers of attorney, creates an unnecessary risk | | | | application filed under Chapter 11 must be |
| of loss of U.S. patent rights. | | | | "authorized to be made" (that is, authorized to be |
| Recent amendment to the PCT regulations and | | | | prepared and filed) by the inventors. Accordingly, |
| corresponding amendments to U.S. regulations | | | | 35 USC 373 requires therefore that entry into the |
| appear to have enabled practitioners to by-pass | | | | U.S. national stage requires that the PCT |
| the inventor signature burden by obtaining a | | | | application had been "authorized to be made" (that |
| power of attorney only from the corporate | | | | is, authorized to be prepared and filed) by the |
| applicant. At least, that is how it appears by | | | | inventor. Moreover, the language of 35 USC 373 |
| following the relevant PCT articles, recent changes | | | | clearly refers to the time of filing of the |
| to the PCT rules, and the commentary on new | | | | international application, and therefore the time |
| 37 CFR 1.421. However, the actual language of 37 | | | | relevant for determining whether the application |
| CFR 1.421 and 35 USC 373 do not support this | | | | was authorized to be filed by the inventors was |
| conclusion. | | | | when the PCT application was filed. |
| I outline the relevant authority and changes | | | | A power of attorney is authorization for an |
| thereto below, and then examine the | | | | attorney to make application on behalf of an |
| consequences of PCT applications filed without | | | | inventor, by definition of the meaning of attorney. |
| express authority from the inventors. Finally, I | | | | That is, a power of attorney is a power to |
| suggest corrective actions the USPTO, U.S. | | | | "authorize.. [the attorney] to act in the place or |
| Congress, and practitioners could take to alleviate | | | | stead of another." Black's Law dictionary, fifth |
| this situation. | | | | edition, page 117. Thus, a power of attorney from |
| II. Relevant PCT Authority Including Recent | | | | an inventor authorizes a practitioner to file a PCT |
| Changes Thereto | | | | application on behalf of that inventor. |
| PCT Article 14(1) states in pertinent part, my | | | | V. The Legal Effect of Filing a PCT Application |
| emphasis added: | | | | Without Express Authorization from the Inventors |
| Article 14 - Certain Defects in the International | | | | at the Time of Filing |
| Application | | | | A. Will the USPTO enforce 35 USC 373? |
| (1)(a) The receiving Office shall check whether | | | | 35 USC 373 requires that an inventor authorize |
| the international application contains any of the | | | | the filing of the PCT application. It does not |
| following defects, that is to say: | | | | require that the authorization be in writing or in |
| (i) it is not signed as provided in the Regulations; | | | | the from of a power of attorney. However, it is |
| (ii) it does not contain the prescribed indications | | | | clearly imprudent to not file proof of authorization |
| concerning the applicant; | | | | from the inventor when filing a PCT application, as |
| (iii) it does not contain a title; | | | | exemplified by the following hypothetical situations. |
| (iv) it does not contain an abstract; | | | | Assume a PCT application filed without express |
| (v) it does not comply to the extent provided in | | | | authorization of the inventors. If the USPTO |
| the Regulations with the prescribed physical | | | | decides to enforce 35 USC 373, it could require |
| requirements. | | | | proof that the inventors had authorized the filing |
| Thus, PCT regulations promulgated under the | | | | of the PCT application at the time it was filed. In |
| authority fo PCT article 14(1)(a)(i) controls what | | | | that case, a PCT application filed anywhere in the |
| signatures the ROs must require. | | | | world without proof of authorization by the |
| PCT Rule 26.2bis (amended and in force as of | | | | inventors may initially be refused entry to the U.S. |
| January 1, 2004) is the regulation to which PCT | | | | national stage. This would be a backtrack on the |
| Article 14(1)(a)(i) relates. PCT Rule 26.2bis states | | | | USPTO's apparently lax position at this time, but |
| in pertinent part, my emphasis added: | | | | within the realm of possibility. |
| 26.2bis Checking of Requirements Under Article | | | | A related issue is of course what constitutes an |
| 14(1)(a)(i) and (ii) | | | | inventor's authorization? Would an employment |
| (a) For the purposes of Article 14(1)(a)(i), if there | | | | contract be sufficient authorization to file a PCT |
| is more than one applicant, it shall be sufficient | | | | application? Would a general or particular |
| that the request be signed by one of them. | | | | assignment of inventions be sufficient |
| (b) For the purposes of Article 14(1)(a)(ii), if there | | | | authorization to file a PCT application? There is of |
| is more than one applicant, it shall be sufficient | | | | course no legal certainty. However, U.S. law and |
| that the indications required under Rule 4.5(a)(ii) | | | | regulations require proof of authorization in the |
| and (iii) be provided in respect of one of them | | | | form of an inventors declaration and a power of |
| who is entitled according to Rule 19.1 to file the | | | | attorney, not a mere employment contract or |
| international application with the receiving Office. | | | | even an assignment. |
| Thus, PCT Rule 26.2bis allows a RO to accept a | | | | Assume the USPTO requires documentary proof |
| PCT application signed by only the corporate | | | | of authorization. What level of documentary proof |
| applicant. | | | | would the USPTO require? For example, would a |
| III. Changes in U.S. Regulations in Connection with | | | | mere ex post facto assertion of the inventor be |
| Changes in the PCT Regulations | | | | sufficient? Would the USPTO require evidence of |
| However, treaties including the PCT are not self | | | | a contemporaneous (with the filing of the PCT |
| implementing under U.S. law. U.S. statutes and | | | | application) authorization from the inventors? |
| regulations must be passed to implement treaties | | | | B. Impact on U.S. Patents Issued on PCT |
| to which the U.S. accedes. In response to the | | | | Applications in Which the Inventor's Authorization |
| changes to PCT Rule 26.2bis, the USPTO published | | | | to File the PCT Application Is Not Apparent |
| rule changes at 68 FR 59881 (published October | | | | Unless Congress acts to revise 35 USC 373, case |
| 20, 2003; effective 1/1/2004), but the USPTO did | | | | law will eventually provide clarification on this issue. |
| not (and could not) change relevant U.S. statutes. | | | | However, at a minium, filing a PCT application |
| U.S. statutes are based upon Bills signed into law | | | | without also filing powers of attorney potentially |
| by the President, and they control over U.S. | | | | weakens any resulting U.S. patent because it |
| regulations. In particular, 68 FR 598883 left hand | | | | raises a potential ground for invalidity. |
| column states in pertinent part, my emphasis | | | | Consider for example an inventor/employee on |
| added: | | | | the witness stand being questioned whether he or |
| Section 1.421: Section 1.421(b) is amended to | | | | she actually authorized the filing of a particular |
| remove reference to § 1.425 (§ 1.425 is | | | | PCT application. Then, consider the inquisitor |
| removed). Under PCT Rule 26.2bis(a) (as | | | | probing into conventional filing practices of the |
| amended), the international application will be | | | | inventor/employee's company indicating that |
| considered to satisfy the signature requirement | | | | inventors were routinely not consulted on PCT |
| for purposes of PCT Article 14(1)(a)(i) if the | | | | filings. |
| request is signed by at least one applicant (except | | | | Consider for example inventors that change |
| that all of the applicants’ signatures will still be | | | | employment between the filing of the PCT |
| required for withdrawals, see discussion of § | | | | application and the filing of the U.S. national stage |
| 1.421(g)). Accordingly, the current requirement in | | | | application. Will their change in allegiance affect |
| § 1.425 that the failure of an inventor to sign | | | | their memory as to whether the authorized the |
| the request in an international application | | | | filing of a PCT application? Will it affect the |
| designating the United States will only be excused | | | | prosecuting attorney's ability to get necessary |
| where the inventor could not be found or reached | | | | proofs from them to overcome a question |
| after diligent effort or refused to sign the request | | | | regarding authorization? |
| will no longer be applicable. Section 1.421(b) is also | | | | Consider for example inventors that die or |
| amended to include the requirement of § 1.424 | | | | become incompetent prior to entering or |
| that joint inventors must jointly apply for an | | | | attempting to enter the U.S. national stage. Will |
| international application. Section 1.424 is removed | | | | the USPTO accept allegations from anyone other |
| (see discussion of § 1.424). Section 1.421(c) is | | | | than the inventor that the inventor did in fact |
| amended as a consequence of the change to | | | | authorize the filing of the PCT application? If so, |
| PCT Rule 4.9, as the United States will always be | | | | what proof will be required? |
| designated upon filing of an international application. | | | | All of these hypothetical situations could be |
| Section 1.421(d) is amended to reflect the change | | | | avoided by obtaining and filing powers from the |
| to PCT Rule 90.4(d) permitting the RO to waive | | | | inventors when filing their PCT application. |
| the requirement for a separate power of | | | | VI. What Could or Should the USPTO Do to |
| attorney. | | | | Address This Issue? |
| The foregoing language in the comments on rule | | | | I did discussed this issue with officials at the |
| changes suggests that signatures of the inventors | | | | USPTO in early 2004. Based upon those |
| are no longer required in order to file a PCT | | | | discussions, it is clear that the USPTO did not |
| application and have the PCT application be | | | | intend to cause problems for PCT applicants, and |
| effective for obtaining a patent in the U.S. In fact, | | | | that the USPTO was attempting to make PCT |
| the actual amendments to the U.S. patent rules | | | | filings less burdensome. However, it was apparent |
| do not support that suggestion. In fact, 37 CFR | | | | from my discussions that the USPTO had not |
| 1.421, as amended, states in pertinent part, my | | | | fully considered, from a practitioner's perspective, |
| emphasis added, that: | | | | the impact, or potential impact, of their regulatory |
| 1.421 Applicant for international application. | | | | changes in connection with 35 USC 373. |
| * * * * * (b) Although the United States | | | | At this time, it would be beneficial for the USPTO |
| Receiving Office will accept international | | | | to do what it can to alleviate any burden or |
| applications filed by any resident or national of the | | | | potential loss of right caused by applicants filing |
| United States of America for international | | | | PCT applications without powers of attorney |
| processing, for the purposes of the designation of | | | | from the inventors, since such filings have been in |
| the United States, an international application must | | | | reliance in part on the USPTO's apparent advise. I |
| be filed, and will be accepted by the Patent and | | | | list some possibilities below. |
| Trademark Office for the national stage only if | | | | First, the USPTO could push Congress or a |
| filed, by the inventor or as provided in §§ | | | | suitable revision to 35 USC 373. |
| 1.422 or 1.423. Joint inventors must jointly apply | | | | Second, the USPTO could notify the public that it |
| for an international application. | | | | will presume that PCT applications filed in the |
| (c) For the purposes of designations other than | | | | international stage were authorized by the |
| the United States, international applications may | | | | inventors. (This is in effect what I believe to be |
| be filed by the assignee or owner. | | | | the current USPTO policy, at least it was the |
| (d) A registered attorney or agent of the | | | | apparent policy until I raised this issue with the |
| applicant may sign the international application | | | | USPTO.) However, for the reasons noted above, |
| Request and file the international application for | | | | this presumption would arguably be inconsistent |
| the applicant. A separate power of attorney from | | | | with Congressional intent and would fail to enforce |
| each applicant may be required. | | | | 35 USC 373. |
| The expression in rule 1.421 "the United States | | | | Third, the USPTO could notify the public that PCT |
| Receiving Office will accept international | | | | applications filed in the international stage without |
| applications filed by any resident or national" | | | | powers of attorney from the inventors will simply |
| means that the USPTO, acting as a PCT RO will | | | | not be accepted (and I guarantee that some |
| accept a PCT application filed by an attorney | | | | practitioners have filed already such applications). |
| having power from any one applicant, such as and | | | | That is, the USPTO could vigorously enforce 35 |
| in particular a corporate applicant. | | | | USC 373. This action seems incredibly harsh, but it |
| However, rule 1.421(b) goes on to state that "for | | | | would be consistent with both U.S. law and the |
| the purposes of the designation of the United | | | | USPTO's function of enforcing U.S. patent laws |
| States, an international application must be filed, | | | | relating to acquisition of patents. |
| and will be accepted by the Patent and | | | | Fourth, the USPTO could notify the public that it |
| Trademark Office for the national stage only if | | | | will, until a specified date, allow "backfilling" of PCT |
| filed, by the inventor." The negative implication is | | | | applications filed since January 1, 2004 with either |
| that a PCT application that is not "filed by the | | | | powers or confirmatory authorizations from |
| inventor" will not be "be accepted by the Patent | | | | inventors, in view of the USPTO's inadvertent |
| and Trademark Office for the national stage." If | | | | inconsistent guidance on this issue. Since the |
| the PCT application is not accepted by the USPTO | | | | changes to the PCT regulations only came into |
| for the national stage, then the applicants have | | | | force January 1, 2004, this would allow all affected |
| lost rights to a U.S. patent. | | | | PCT applicants to obtain and filed the necessary |
| I discussed my concerns with USPTO officials | | | | authorizations. Of course, patents issuing from |
| regarding the inconsistency of the changes in the | | | | such "backfilled" applications would still be subject |
| PCT Rule 26.2bis and U.S. rule 1.421(b). They | | | | to a validity challenge for failure to comply with 35 |
| indicated that the reason for the tortured | | | | USC 373 in subsequent litigation. |
| language in 37 CFR 1.421 is because that language | | | | VII. What Can Practitioners do Now to Correct |
| mirrors the statutory requirements in 35 USC | | | | PCT Applications Filed Without Authorization from |
| 373, which I discuss below. 37 CFR 1.421(b) is | | | | the Inventors? |
| directed specifically to applications filed in the US | | | | If you have filed such a PCT application, at a |
| RO. However, the statutory language is not, I | | | | minium, an obvious course of action is to obtain a |
| repeat, is not, limited to applications filed in the US | | | | confirmatory power of attorney and file that in |
| RO. The statutory language applies to all PCT | | | | the PCT application as soon as practical. It may |
| applications wherever they are filed. | | | | be that you or corporate counsel have |
| IV. Relevant U.S. Statutory Authority Has Not | | | | correspondence with the inventors, and that |
| Changes, and it Requires that Inventors Authorize | | | | correspondence may indicate that the inventors |
| Filing of a PCT Application | | | | knew of and impliedly authorized the filing of the |
| 35 USC 373 states reads as follows. | | | | PCT application. I would memorialize that evidence, |
| 35 USC 373 Improper applicant. | | | | and consider in each case what to file in the PCT |
| An international application designating the United | | | | application or the subsequent U.S. national stage |
| States, shall not be accepted by the Patent and | | | | proceeding to prove that the inventors did in fact |
| Trademark Office for the national stage if it was | | | | authorize filing of the PCT application. |
| filed by anyone not qualified under chapter 11 of | | | | Alternatively, if the Paris year has not run, you |
| this title to be an applicant for the purpose of filing | | | | could file a second PCT application and claim Paris |
| a national application in the United States. | | | | priority to the first PCT application, and of course |
| Legislative history relevant to this section appears | | | | include powers from the inventors. Still further, if |
| on page 18 of the Senate Report entitled | | | | the Paris year has run, you could re-file the PCT |
| "Implementation of the Patent Cooperation | | | | application without claiming Paris priority and take |
| Treaty" CIS-1975-S523-9 (Jun 19, 1975). That | | | | your chances. |
| section states in pertinent part that: | | | | VIII. Conclusion |
| 373 Improper Applicant | | | | It should be clear that failing to obtain powers |
| This section provides that an international | | | | from the inventors when filing PCT applications |
| application designating the United States, shall not | | | | anywhere in the world is currently inadvisable |
| be accepted if it was filed by anyone who, | | | | because it may negatively impact subsequent U.S. |
| according to chapter 11 of this title, is not entitled | | | | national stage proceedings. Accordingly, all |
| to be an applicant in the United States. The | | | | practitioners everywhere should continue to |
| refusal can only be made when the application | | | | require either powers or express authorizations |
| enters the national stage (Article 27(3) of the | | | | from each inventor to file any PCT application. |