Attachment 26 - DCB 2020-14.docx

D a t a C a p t u r e B u l l e t i n

Number 2020-14 June 24, 2020

REVISED GUIDELINES

FOR APPLICANT AND INVENTOR CHANGES

VIA FORM PCT/IB/306

The information in this bulletin will be included in the 2021 revision of DATA ENTRY MANUAL FOR UTILITY PATENTS.

***This bulletin is effective immediately.***

See DATA ENTRY MANUAL FOR UTILITY PATENTS, 7A. Applicant Data, Data Source & Pre-Capture Verification—applications filed on or after September 16, 2012, additional verification guidelines—applicant data.

Guideline 14 is superseded by what is shown on Pages 3–7 of this bulletin.

14. Form PCT/IB/306 (Notification of the Recording of a Change) and applicant changes.

Background: Form PCT/IB/306 notifies offices of a change in bibliographic data recorded by the International Bureau (IB) pursuant to PCT Rule 92bis. A timely and properly signed request under Rule 92bis by the applicant is effective upon receipt by the international authority. If effective, the IB will issue the PCT/IB/306 reflecting entry of the change. A Rule 92bis request made after “commencement” of the U.S. national stage will not be effective as to the United States even though such change may result in the issuance of a PCT/IB/306 and be reflected in the bibliographic data on WIPO’s Patentscope database.

most commonly, at the beginning of the national stage

When there is a form PCT/IB/306 showing an applicant change, the form is usually one of the papers retrieved from WIPO’s International Bureau by the USPTO at the beginning of the application’s U.S. national stage under 35 U.S.C. 371, in which case the form is given document code P.306 and the same IFW/DAV document date as the other documents in the initial 371 submission.

However, the actual date of a P.306 is not its IFW/DAV document date. Instead, the actual date of a P.306 is the “Date of mailing (day/month/year)” on the form itself (an example is circled in red below). In some cases, due to USPTO IT constraints, the “Date of mailing (day/month/year)” on the form may actually be later than the IFW/DAV document date.

In what follows, the “date of the initial 371 submission” is the date on which the first national stage papers were received in the USPTO from the applicant.

If the “Date of mailing (day/month/year)” on the P.306 precedes the date of the initial 371 submission, then the applicant information change described on the P.306 should have been entered into PALM and should be shown on the most recent APP.FILE.REC/BIB (absent a further change in the applicant in accordance with U.S rules). This is because the Rule 92bis change upon which the P.306 is based necessarily would have occurred prior to commencement of the U.S. national stage. The PaDaCap contractor will use such P.306 as the data source for the applicant information.

If the “Date of mailing (day/month/year)” on the P.306 precedes the date of the initial 371 submission, but its applicant information change has not been entered into PALM and is not shown on the most recent APP.FILE.REC/BIB, then the PaDaCap contractor will enter the P.306’s applicant changes into PALM, will send out a corrected APP.FILE.REC, and will use the P.306 as the data source for the applicant information (subject to any applicant change in accordance with U.S. rules).

If the “Date of mailing (day/month/year)” on the P.306 is on/after the date of the initial 371 submission, yet the applicant information change described on the P.306 has been entered into PALM and is shown on the most recent APP.FILE.REC/BIB, then the PaDaCap contractor will contact the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office.

NOTE: The actual operative date is the “date of commencement” of the U.S. national stage, which is not necessarily the same as the date of the initial 371 submission. The PaDaCap contractor will not be required to calculate the “date of commencement” of the national stage, which involves 35 U.S.C. 371(b) and 35 U.S.C. 371(f), and which is why questions in this area will be directed to ODM.

The PaDaCap contractor may encounter a national stage application in which the USPTO has failed to retrieve one or more of the application’s pre-national-stage PCT/IB/306 documents. There was a period during which the USPTO system pulled only one pre-national-stage PCT/IB/306, even when http:/patentscope.wipo.int/search/en/advancedSearch.jsf showed multiple PCT/IB/306 documents. In these instances the multiple pre-national-stage PCT/IB/306 documents when taken together fully describe the applicant change. In such cases,

(1) as long as the PaDaCap contractor can locate all pre-national-stage PCT/IB/306 documents pertaining to the applicant change, whether such documents are present in the IFW/DAV file wrapper or are present only at http:/patentscope.wipo.int/search/en/advancedSearch.jsf, and

(2) as long as the PaDaCap contractor can verify that PALM (as shown on the APP.FILE.REC) and http:/patentscope.wipo.int/search/en/advancedSearch.jsf show the same applicant data, then

(3) the PaDaCap contractor may proceed with capturing and printing the correct applicant data, even though the IFW/DAV file wrapper shows fewer PCT/IB/306 documents than are shown at WIPO Patentscope.

At the end of February 2019 the USPTO implemented an IT fix to correct the problem of not retrieving all of an application’s pre-national-stage PCT/IB/306 documents. Note, however, that national stage applications where the IB documents were retrieved prior to the fix may not have all P.306 documents.

If there is a question about applicant information involving a P.306, or if it appears that a change of national-stage applicant has been erroneously entered into PALM by the USPTO, or if there is any other question about the applicant information in a national stage application, the PaDaCap contractor will contact the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office.

In a national stage application, the PaDaCap contractor will send a post-allowance Notice to File Corrected Application Papers, APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012, NOT IN COMPLIANCE WITH 37 CFR 1.46(c), only when instructed to do so by ODM.

For example, the date of the initial 371 submission is 02-26-2016:

· ABST 02-26-2016 (international publication’s front page) shows applicant as ALPHA INC.

· ADS 02-26-2016 shows applicant as BETA INC.

· There is no R3.73 showing BETA INC as the assignee.

· APP.FILE.REC 04-05-2016 shows applicant as BETA INC., and PALM at allowance shows BETA INC as the applicant.

· WIPO Patentscope shows a PCT/IB/306 changing the applicant to BETA INC. The PCT/IB/306’s “Date of mailing (day/month/ year)” is 04-14-2016.

· The PaDaCap contractor contacts ODM. Based on guidance from IPLA, it is determined that, although the PCT/IB/306’s “Date of mailing (day/month/ year)” of 04-14-2016 follows 02-26-2016 (the date of the initial 371 submission), 04-14-2016 does precede the actual “date of commencement” of the national stage, which means the applicant change is proper and BETA INC is the correct applicant.

more rarely, after the national stage has begun

It would be unusual, but it is possible after the national stage has begun for the applicant to file an ADS to change the applicant information and, instead of being accompanied by a 3.73(c) statement, the ADS is accompanied by a form PCT/IB/306 showing the applicant information change. “In such instances,” according to International Patent Legal Administration, “the Office should confirm both the timeliness of the change indicated in the form PCT/IB/306 and whether there are other forms PCT/IB/306 that were not submitted but need to be considered.” If such a form PCT/IB/306 is filed and the USPTO has not acted on it—that is, has not sent out an APP.FILE.REC showing the applicant information change and has not sent out a rejection of the applicant change request—the PaDaCap contractor will contact the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office.

Data Source & Pre-Capture Verification—applications filed on or after September 16, 2012, applicant who is not an inventor.

Under exception 2, the NOTE is revised as shown below.

Note A: If the front page of the international publication (ABST or 371P or P.PAMPHLET) shows (72) Inventors; and (71) Applicants (for US only) information, then the inventor(s) are original applicant(s), which means that a signed ADS showing the assignee (or obligated assignee or proprietary party) as the applicant—even if such ADS was submitted at the beginning of the U.S. national stage—must be accompanied by a proper 3.73(c) statement. (Underlining, striking through, or bracketing is not required for an ADS that is included in the initial 371 submission. An ADS filed after the initial 371 submission must meet the markup requirements.)

Note B: See 14. Form PCT/IB/306 (Notification of the Recording of a Change) and applicant changes.

Note C: See 12. When an improper correction/update-of-applicant-name request or improper change-of-applicant request was mistakenly accepted by the USPTO. For a national stage application, Guideline 12 involves an extra processing step. In a national stage application, if the PaDaCap suspects that the USPTO improperly accepted a change of applicant, the PaDaCap contractor will contact the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office. In a national stage application, the PaDaCap contractor will send a post-allowance Notice to File Corrected Application Papers, APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012, NOT IN COMPLIANCE WITH 37 CFR 1.46(c), only when instructed to do so by ODM.

Data Source & Pre-Capture Verification—applications filed on or after September 16, 2012, additional verification guidelines — applicant data.

Guideline 12 is superseded by what follows.

12. When an improper correction/update-of-applicant-name request or improper change-of-applicant request was mistakenly accepted by the USPTO.

NOTE: For a national stage application, Guideline 12 involves an extra processing step. In a national stage application, if the PaDaCap contractor’s analysis concludes that the USPTO may have improperly accepted a change of applicant, the PaDaCap contractor will contact the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office. In a national stage application, the PaDaCap contractor will send a post-allowance Notice to File Corrected Application Papers, APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012, NOT IN COMPLIANCE WITH 37 CFR 1.46(c), only when instructed to do so by ODM.

Above see the preceding guidelines, particularly 5, 6, 7 about the application data sheet and 8, 10, 11 about the 3.73(c) statement.

Except in a national stage application as described above, when the PaDaCap contractor concludes that the USPTO mistakenly accepted a request to correct/update an applicant name or a request to change the applicant, when such request did not meet the requirements of 37 CFR 1.46(c), the PaDaCap contractor will do the following:

1. Send out a post-allowance Notice to File Corrected Application Papers (APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012, NOT IN COMPLIANCE WITH 37 CFR 1.46(c)) in accordance with Appendix_M, giving the applicant two months (extendable for two additional months) in which to submit the proper change-of-applicant documents plus a transmittal letter requesting that the Office continue to recognize the applicant change. (The notice form contains a box for the date of the APP.FILE.REC on which the change of applicant was mistakenly printed. If there are multiple APP.FILE.REC documents showing the mistakenly accepted change of applicant, the notice form should show the date of the earliest APP.FILE.REC on which the change of applicant was printed.)

1. Make no changes to the mistakenly entered applicant information in PALM to await the response to the notice. (In Appendix_M see Special instructions for processing responses to notice pertaining to non-compliance with 37 CFR 1.46(c) for guidelines as to when it will be necessary to correct PALM.)

For example, the inventors were the original applicants, then later the assignee filed a change-of-applicant request that did not include a 3.73(c) statement or did not include a marked-up application data sheet, yet the USPTO mistakenly accepted the change-of-applicant request and sent out a corrected filing receipt showing the assignee as the applicant. When the PaDaCap contractor receives the allowed application, the latest APP.FILE.REC or BIB shows the assignee as the applicant. In this situation, even if the issue fee has been paid, the PaDaCap contractor will send out the post-allowance Notice to File Corrected Application Papers as described above and in Appendix_M.

NOTE: The above-described procedure would not be applicable to situations involving legal representatives or to situations in which the USPTO has granted an applicant-related petition under 37 CFR 1.182 or has granted a proprietary-party petition under 37 CFR 1.46(b)(2).

7B. Inventor Data, Data Source, PCT/IB/306 and inventor data changes.

The two paragraphs beginning “When an ADS” and the intervening NOTE are revised by the addition of a second NOTE, as shown below.

· PCT/IB/306 and inventor data changes

When an ADS accompanies the initial 35 U.S.C. 371 (national stage) submission, the ADS establishes the inventorship, and what happened with respect to the inventor information during the international stage—including the front page of the international publication (ABST or 371P or P.PAMPHLET) and any inventor information change on a P.306 (PCT/IB/306, Notification of the Recording of a Change)—is not operative.

When an ADS does not accompany the initial 35 U.S.C. 371 (national stage) submission, the front page of the international publication (ABST or 371P or P.PAMPHLET) establishes the inventorship, subject to inventor information changes on a P.306 (PCT/IB/306, Notification of the Recording of a Change).

When an ADS does not accompany the initial national stage submission and a P.306 becomes relevant, the P.306’s actual date is the “Date of mailing (day/month/year)” on the form itself. If the “Date of mailing (day/month/year)” precedes the date of the initial 371 submission, then the inventor information change described on the P.306 should have been entered into PALM and should be shown on the most recent APP.FILE.REC/BIB (absent a further inventor change in accordance with U.S. rules). If such PALM entry has not been made, the PaDaCap contractor may make the change to PALM and send out a corrected APP.FILE.REC. Such P.306 will serve as the data source for the inventor information (subject to any inventor change in accordance with U.S. rules). Questions in this area should be directed to the Manager, Publication Branch, Office of Data Management, who may seek guidance from the International Patent Legal Administration office.

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