Assignee Patent Applicants and Foreign Filing

The America Invents Act changed up a lot of the paperwork typically filed initially with an original patent application. One of the changes allowed “applicants,” or assignees, to directly file an application. Previously, an inventor would file the application, and a recorded assignment would be filed contemporaneously, transferring ownership of the application to an assignee company, which would then control prosecution of the application and own the ensuing patent.

Apparently, this caused priority issues when a PCT application was filed, because a discrepancy between the inventor on the US application and the applicant (the company) on the PCT application would exist. More than a few PCT cases had priority claims declared invalid because of that discrepancy, which led to the patents from the PCT case being dropped as well.

The AIA has brought in new forms which now identify applicants that are assignees rather than inventors. The Application Data Sheet includes a section which applicants who are not inventors can fill out. One of the Power of Attorney forms is to be used by assignee applicant, while another one is to be used only by an inventor applicant. By naming the assignee as the applicant in these post-AIA cases, the discrepancy in the priority claims can be avoided.