US patent application based on the contents of Chinese patent applications

Question

I have some patent questions related to several Chinese patent applications, which belong to my company (US company) and a Chinese company. I asked the Chinese company with my company to file a US patent application based on the contents of the Chinese patent applications. However, the Chinese company does not want to do so and let my company file such a US patent application alone (orally permit my company to do so without any problem). In addition, the Chinese patent applications have not filed a PCT.

Based on the situation above, my questions are:

Can my company file such a patent application alone legitimately (the Chinese patent applications belong to both companies but the US patent application will belong to my company only)? If it is legitimate to do so, what kind of documents do I need from the Chinese company to allow my company to file such a US patent application? Can my company file such a US patent application without any legal permission document from the Chinese company?

I look forward to receiving your opinions and very much appreciate your comments.

Kind regards, John

Answer 1

Priority is governed by 35 USC §119(a). The important part for us is the beginning, which provides:

An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country …

It then ends with a long-winded explanation of the effect of claiming priority.

The USPTO interprets this in an unusual way, per MPEP § 213.02(II):

Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by his or her legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. … The application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor, rather than by the inventor, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein.

So as long as the US and foreign applications have a common inventor, for the purposes of the USPTO it seemingly doesn't matter who the actual applicants are. As such, as long as you name the same inventors on the US application as on the foreign application, it should be irrelevant that you are the only applicant for the purpose of a valid priority claim.

Of course, it is possible the USPTO is interpreting this in an improper fashion. But it is impossible to know until a case precisely on all fours with yours is considered by the courts.

Documents

Seemingly nothing is necessary from the Chinese company. However, you should have an assignment of the rights from the inventors to you, at least in respect of the US.

However, if you wanted to put matters beyond doubt, you might want to have the Chinese company explicitly assign their rights to you, at least in respect of the US. You would not need to file this, but it would be worth having in case it is needed.