In another article, we discussed how to fix various substantive errors in the description of a PCT application when entering the Japanese national phase. This time we will shed some light on what an applicant who wants to enter Japan's national phase should do with formality errors or updates in inventor information on a PCT international application.
The rule of thumb in short should be that once a PCT international application is entered in Japan, the inventor data cannot be changed easily, so it is best to have a Recording of Changes filed under the PCT Rule 92bis before entry in the Japanese national phase. Depending on your situation, the following details may be, we hope, useful to you.
What if an inventor person, name, or nationality entry is incorrect or missing?
If the inventor name or other information is clearly incorrect, it is permitted to amend it. However, the JPO can be very strict on formality changes and may require a compelling explanation of what is "clearly" incorrect.
Actually, if there is an error in an inventor's name as entered in the Japanese national phase (e.g. when compared with the PCT application data), the JPO may itself require the correction. For example, it may require addition of the nationality of the inventor(s) if that is not clear from the international phase application. Therefore, is best to include all correct information from the international stage, either from the application or with a 92bis recording before the 30-month date from the priority date (and before national phase entry to Japan).
What if my PCT Rule 92bis Recording was received by WIPO after the 30-month deadline?
This is possible if the Recording is sent too late. In this case, it is possible to submit an Amendment to the national phase application in Japan. A Japanese patent law firm like ours can write the explanation needed for the JPO to consider the late changes. Of course, please note that if you are filing national phase in multiple countries, a late-filed 92bis Recording may mean you need to file changes with each national (regional) patent office separately.
What about a change or correction to an inventor's address?
The inventor's address is basically fixed once it enters the Japanese national phase. This is because the JPO treats the inventor's address as accurate at the time of international filing and then the national phase entry, and thus update is not necessary. (The applicant already technically had the opportunity to verify and correct or update information with a PCT Rule 92bis filing.) Changes to an inventor's address do not affect the IP rights associated with the application (however, this is not necessarily true for the applicant's address–see more on that in a separate post here).
Only under limited circumstances will the JPO allow (or perhaps require) correction of an inventor's address–for example, when (a) the indicated address contains a typographical error or (b) the indicated address is inconsistent with that of another formal document (oath, declaration, etc.).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
