We have been asked what to do about recording a new applicant for a patent application that started in the PCT international phase but will be entering Japan. This may particularly take place after the original applicant(s) assign rights to another party. Here are some thoughts.
I gained rights to this PCT application but have not submitted a Recording of Change under PCT Regulation, Rule 92bis. What should I do to be treated as applicant in the Japanese national phase?
We would generally strongly recommend an applicant to try to get a 92bis Recording of Changes filed during the PCT international phase, before the 30 months after priority date pass, if at all able to do so.
For your information, we have dealt with a case when a 92bis was submitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO) before the 30-month deadline but only received after the deadline, so extra amendment was necessary in the national phase. Therefore, please try to get the 92bis Recording filed quickly (online, perhaps). If it does end up being late although it was submitted on time, redress for this issue may be possible for your case.
What is the problem with filing a change after the national phase entry?
It is possible to file an Assignment after entry to Japanese national phase. However, this would mean extra cost and effort. The advantage of using a 92bis Recording during the international phase is that it may be applied for all countries where the applicant enters national phase, saving the hassle of meeting individualized countries or regions' requirements to register an assignment of patent rights.
Sources
World Intellectual Property Organization. "Rule 92bis of the Regulations under the PCT," accessed July 10, 2018.
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