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AIA Brings Welcome Change to PCT Filing

Thanks to the America Invents Act (AIA), the USPTO may serve as the receiving office for PCT applications by foreign inventors if the “applicant,” including a commercial assignee of the invention, is a U.S. resident.

The PCT allows “applicants,” defined as “any natural person or legal entity,” to file PCT applications in the country of which they are a resident or national. Prior to the AIA, the USPTO recognized only inventors as applicants and, therefore, PCT applications with U.S. assignees but without U.S. inventors had to be filed with the country of nationality or residency of the inventor or with the International Bureau—a process that often required the assistance of foreign agents and additional consider-ations. The AIA brought the United States into alignment with the PCT and the rest of the PCT contracting states by allowing legal entities (assignees) to be designated as applicants on PCT applications. While this change may be welcomed, practitioners are advised to consider potential local law restrictions, such as the requirement of obtaining a foreign filing license or examination for national security purposes, before filing patent applications by foreign inventors (or for inventions conceived in another country) with the USPTO. For instance, in order to retain patent rights in China for inventions conceived in China (irrespective of the nationality or residence of the inventor), the applicant must file a request for confidentiality examination and obtain a foreign filing license prior to filing a foreign patent application.

■ Thea E. Reilkoff

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