Introduction

When managing PCT applications entering the United States, altering the inventive entity is a common requirement during prosecution. The procedural route, deadlines, and documentation requirements depend on timing and filing strategy. Applicants typically choose among three procedural pathways:

1.    Recording changes with the International Bureau (IB) under PCT Rule 92bis;
2.    Correcting inventorship post-entry under 37 CFR § 1.48(a); or
3.    Direct naming at filing via a U.S. “bypass” continuation under 35 U.S.C. § 111(a).
 

Pathway 1: PCT Rule 92bis (International Phase)

Rule 92bis provides a centralized mechanism for changing bibliographic details, specifically inventorship, during the international phase of a PCT application. This route is particularly well-suited for multi-jurisdictional filing strategies when the need to alter the inventive entity is recognized early in the application lifecycle.

Procedurally, the request must be received by the International Bureau (IB) prior to the expiration of 30 months from the priority date. Because this 30-month deadline is strict and non-extendable, applicants should submit the request directly through ePCT rather than routing it through a receiving Office to prevent critical transmittal delays.[1]

The primary advantage of Rule 92bis is its global efficiency: a single, timely request successfully updates inventorship across all designated and elected states. Furthermore, the procedural burden is low, as the IB generally does not require supporting evidence or new inventor declarations if the request is submitted by the applicant of record. 

However, Rule 92bis carries distinct limitations. Beyond the unyielding 30-month cutoff, recording a change with the IB does not satisfy jurisdiction-specific national phase requirements. For U.S. practice in particular, applicants must still ensure that national stage entry documents accurately reflect the corrected inventive entity and include properly executed Inventor Declarations. 
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Pathway 2: § 371 National Stage Entry + 37 CFR § 1.48(a)

When a PCT application enters the U.S. national stage under 35 U.S.C. § 371 and inventorship needs correction, whether because the Rule 92bis window has passed or the error was uncovered during U.S. examination, the applicant must seek correction directly before the USPTO under 37 CFR § 1.48(a). 

Procedurally, this pathway requires a series of specific administrative filings. The applicant must submit a corrected Application Data Sheet (ADS) with clear markups showing the requested additions or deletions, pay the processing fee under 37 CFR § 1.17(i), and provide a § 1.63 Declaration (or § 1.64 Substitute Statement) for every newly added or remaining inventor who has not previously executed one. Furthermore, if the request is submitted after the first Office Action on the merits, an additional surcharge under § 1.17(d) applies, unless the correction is necessitated solely by claim cancellation. 

The principal strength of this route is its timing flexibility. Unlike Rule 92bis, § 1.48(a) has no strict 30-month limit and may be utilized at any point during prosecution prior to payment of the Issue Fee. 

The primary trade-off is geographic and administrative scope. A § 1.48(a) correction applies strictly to the U.S. application, offering no foreign national phase benefits. Additionally, it carries a higher document burden and risks incurring late fees if delayed until later stages of U.S. examination.

 

Pathway 3: Bypass Application under 35 U.S.C. § 111(a)​

As an alternative to entering the § 371 national stage, applicants may file a U.S. nonprovisional application under 35 U.S.C. § 111(a) as a continuation, divisional, or continuation-in-part that claims the benefit of the international application under 35 U.S.C. §§ 365(c) and 120, commonly referred to as a “bypass” application.

 

Because a bypass continuation is a newly originated U.S. application rather than a direct entry of the international phase, inventorship is established directly in the initial ADS at filing pursuant to 37 CFR § 1.41(a). Consequently, the corrected inventive entity can simply be named in the initial filing without initiating a formal § 1.48 correction procedure.

 

To utilize this route effectively, three conditions must be met: the PCT application must designate the U.S. and be entitled to an international filing date, the bypass application must be filed while the PCT application remains pending (typically within 30 months from the priority date), and crucially, at least one inventor must be common to both the PCT and the bypass application.

 

The bypass route offers significant procedural advantages. Beyond eliminating the need for a § 1.48 correction request, it unlocks strategic U.S. prosecution options, such as taking advantage of U.S. restriction practice—which provides a double-patenting safe harbor for divisionals—and bypassing verbatim English translation requirements for non-English PCT filings.

However, applicants must carefully manage the statutory continuity requirement. If the inventors being removed leave no overlapping inventors between the PCT and bypass filings, the underlying § 120 benefit claim fails. Additionally, filing a bypass application requires paying standard, full U.S. nonprovisional filing fees.

 

Summary Comparison Table

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​​​Practical Recommendations

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Multi-Jurisdictional Strategy (Prior to Month 30): If inventorship changes are identified before the 30-month deadline and foreign national phase entries are planned, always file a Rule 92bis request via ePCT first. This streamlines inventorship globally in a single step.

 

Post-National Stage Entry Changes: If the U.S. national stage is already entered under § 371, utilize 37 CFR § 1.48(a). File the corrected ADS and declarations before the first Office Action on the merits to avoid incurring additional USPTO fees (§ 1.17(d)).

 

U.S.-Specific Bypass Strategy: If filing a U.S. bypass continuation for strategic reasons, simply name the corrected inventive entity in the initial ADS. Crucial Check: Verify that at least one inventor overlaps with the PCT application to safeguard the priority benefit claim under 35 U.S.C. § 120.

 

Oath/Declaration & Assignment Best Practices: Correcting inventorship on the ADS does not eliminate the need for proper ownership documentation. Always ensure that newly added inventors execute both the U.S. Inventor Declaration (§ 1.63) and an Assignment to the target entity in a timely manner to maintain a clean chain of title.

 

Endnotes

[1] World Intellectual Property Organization (WIPO), Mastering ePCT: Request for Change under PCT Rule 92bis, “Requirements on change requests (1),” R92bis change request – 4 (Dec. 10 & 12, 2024), 
https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_webinar_pct_2024_29/wipo_webinar_pct_2024_29_presentation.pdf