The "PCT Newsletter - April 2004" is now available at http://www.wipo.int/pct/en/newslett/2004/pdf/04_2004.pdf and includes information on fee changes, the applicability of the new Examination Guidelines, PCT-SAFE software updates, and some practical advice about "inventors only" designations discussed below.
The USPTO Fee Schedule for fiscal year 2004 has now been revised to account for new Patent Cooperation Treaty fees at http://www.uspto.gov/web/offices/ac/qs/ope/fee2004apr01.htm.
The new Examination Guidelines at www.wipo.int/pct/en/texts/gdlines.htm entered into force on 25 March 2004 an apply only to the processing of international applications filed on or after January 1, 2004. The superseded Guidelines will, in general, continue to apply to the processing by the International Searching and Preliminary Examining Authorities of international applications filed prior to January 2004.
A new version of the PCT-SAFE Client software (version 3.50 (build 0002.162) was released on April 1, 2004, and is available for downloading at www.wipo.int/pct-safe/en/index.htm. If you are filing your international application using the PCT-SAFE software, and you indicate the inventors as "inventors only" when entering the bibliographic data, you will receive a (yellow) warning message to alert you to the fact that the inventor should be indicated as applicant/inventor for the purposes of the US designation. This warning will not prevent you from proceeding with your application.
If you are sure that you have no intention of entering the national phase in the US, there is no obligation to indicate inventors as applicants and obtain their signatures. Listing the inventors as "inventors only" will not prevent the international application from proceeding in the international phase and, provided that you do not attempt to enter the national phase in the US, will be of no consequence to your application later on. However, it is important to stress that you should only indicate the inventors as "inventors only" if you are sure that you will not wish to enter the US national phase, or that you do not wish to take advantage of having a co-pending "US application" until 30 months from the priority date. If you are at all uncertain about your intentions, it is safer to keep your options open and indicate the inventors as applicants.
For more information about the PCT system, please contact the author of this issue of "APLF Updates," Bill Heinze (firstname.lastname@example.org), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.
The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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