Best Practice Tip: Who Should Be Named as the “Applicant” for Incoming Foreign-Originated Applications?

By Warren Wolfeld of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, August 8, 2017.

35 USC 119(a) is the statute that allows one (an individual, entity, etc.) to claim priority to an earlier “priority” application in another country. However, this statute appears to have been written for the pre-AIA regime in which US

Applicants were always the Inventors. Because this is no longer the case, applicability to a regime in which we name Assignees as Applicants is a little more complicated.

Our Best Practice Tip is to ensure that the Applicant named for the US application is the same entity as the Applicant that was named for priority application. If that is not possible, then another option would be to name as Applicant in the US application the immediately prior entity in the ownership chain (i.e., the entity that assigned the application to the entity that was named as Applicant in the priority application). For example, if the Inventors’ Assignee filed the priority application, then either the Assignee or the Inventors could be named as the applicants for the US application.

The statute does not appear to grant priority if a subsequent entity is named in the ownership chain. For example, if the priority application named the Inventors as Applicants, then do not name the Inventors’ Assignee as Applicant in the US case. Instead the Inventors should be named as Applicants.

This Best Practice Tip is intended for usual situations, and there may be relatively rare situations in which we are not limited to the above. If the situation is unusual, then the law should be considered specifically with respect to that particular scenario.

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