Practical Advice
Naming of the inventor
Q: I am a European Patent Agent. My client filed a European patent application in which he waived his right to be mentioned as an inventor. Now he intends to file a PCT application and again does not wish to be mentioned. Is it equally possible in a PCT application to indicate the name of the inventor but keep it confidential?
A: As a general matter, Article 4ter of the Paris Convention for the Protection of Industrial Property guarantees inventors the right to be acknowledged in the patent document and many national or regional patent systems require that the name of the inventor be indicated when the application is filed. Occasionally, inventors wish that their names remain confidential. However, unlike, for example, the European patent system where your client was able to waive his right to be mentioned (Rule 20.1 of the Implementing Regulations to the European Patent Convention) that is, to have his name included in the application and simply request that it remains confidential without any further conditions to be met, the PCT system does not provide a similar mechanism for inventors to request that their name not be made publicly accessible.
Under the PCT system, the only way to ensure that the name of the inventor is not disclosed would be to omit the inventor’s name from the international application. And doing so would then oblige the applicant to provide the name of the inventors to each designated Office upon entry into the national phase. Although Contracting States, in their capacity as designated States, do not generally require that the name of the inventor be furnished at the time of filing, most designated Offices would require that the names of the inventors be provided at least upon national phase entry (please refer to PCT Rules 4.1(a)(iv), 4.1(c) and 4.6 for further information).
Therefore, to avoid any problems or delays in the national phase, it is strongly recommended to furnish this information in the international phase, noting that in most Contracting States, the inventors’ names will in any event be required and made publicly available during the national phase, subject to any national data protection laws which might apply.
Where indications concerning the inventor are included or added in time under PCT Rule 92bis (before technical preparations for international publication are completed), they will appear in the international publication in accordance with PCT Rule 48.2(b)(i) and Section 406(c) and Annex D, item 4, of the Administrative Instructions under the PCT. Where inventor data is added later (after publication but before the expiration of 30 months from the priority date) under PCT Rule 92bis, the bibliographic data tab on PATENTSCOPE will be updated accordingly and this information will be publicly accessible under Rule 94 as part of the application file held at the International Bureau. Any notice requesting that the name of the inventor not be disclosed will not have any effect if submitted in relation to a PCT application.
Under current procedures, privacy considerations are taken into account to some extent in relation to the inventors’ postal addresses and email addresses, in so far as they are excluded from the text-form data displayed in the “PCT Biblio. Data” tab of PATENTSCOPE (as opposed to the published application which is accessible only in image format). As a consequence, these addresses are not searchable by Internet search engines. It should also be noted that the PCT does not require that the address indicated for the inventor in the request form be the inventor’s “home” address (PCT Rule 4.4(c)). Instead, the employer’s address may be indicated as the inventor’s address.
As previously mentioned, most PCT Contracting States mandate that the inventor be indicated in the patent application process. Therefore, it is strongly advised to provide the inventor's name during the international phase.
For further information on the requirement of each designated Office regarding the furnishing of the name and address of the inventor, please refer to Annex B of the PCT Applicant’s Guide.