1806 Applicants and Inventors [R-07.2015]

Any resident or national of a Contracting State may file an international application. See PCT Article 9 and PCT Rule 18. The applicant can be an individual, corporate entity or other concern. Where there are two or more applicants, at least one of them must be a national or a resident of a Contracting State.

The question of whether an applicant is a resident or national of a Contracting State depends on the national law of that State and is decided by the receiving Office. Also, possession of a real and effective industrial or commercial establishment in a Contracting State may be considered residence in that State, and a legal entity constituted according to the national law of a Contracting State is considered a national of that State.

Where the inventor is not the applicant, indications concerning the inventor must nevertheless be made in the Request where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application (PCT Rule 4.1(a)(iv)). See PCT Applicant’s Guide, International Phase, Annexes B1 and B2, for those States and regional patent systems which require such indications. Furthermore, information concerning the inventor is required by most countries for the national phase. In such a case, the check-box “inventor only” should be marked, the inventor’s name and address indicated in Box No. III, and the inventor’s residence and nationality omitted.

I. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE ON OR AFTER SEPTEMBER 16, 2012

37 CFR 1.421 Applicant for international application.

[Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

• (a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
  • (1) Has indicated a residence or nationality in a PCT Contracting State, or
  • (2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).

  37 CFR 1.422 Legal representative as applicant in an international application.

  [Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 on or after September 16, 2012]

  If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.

  II. APPLICANT FOR PURPOSES OF THE UNITED STATES IN INTERNATIONAL APPLICATIONS HAVING AN INTERNATIONAL FILING DATE BEFORE SEPTEMBER 16, 2012

  37 CFR 1.421 (pre-AIA) Applicant for international application.

  [Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

  • (a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
    • (1) Has indicated a residence or nationality in a PCT Contracting State, or
    • (2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).

    37 CFR 1.422 (pre-AIA) When the inventor is dead.

    [Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

    In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.

    37 CFR 1.423 (pre-AIA) When the inventor is insane or legally incapacitated.

    [Editor Note: Applicable to patent applications filed under 35 U.S.C. 363 before September 16, 2012]

    In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.

    For international applications having international filing dates before September 16, 2012, only inventors (and legal representatives of deceased or legally incapacitated inventors) can be applicants for purposes of the designation of the United States. Therefore, for the purpose of entering the national stage in the United States of America, the inventor(s) must be indicated in the PCT Request as “applicant and inventor” for at least the United States.

    A legal representative of a deceased inventor may be indicated in the international application as an applicant for the purposes of the United States. In such a case, the indication in the Request (in Box II or III, as appropriate) for the legal representative should be made as follows: SMITH, Alfred, legal representative of JONES, Bernard (deceased), followed by indications of the address, nationality and residence of the legal representative. The legal representative should be indicated as an “applicant only” except where the legal representative is also an inventor, in which case the legal representative should be indicated as an “applicant and inventor.” The name of the deceased inventor should also appear in a separate box (in Box III) with the indication of “deceased” (e.g., “JONES, Bernard (deceased))” and identified as an “inventor only” and not as an applicant.