A member of the PCT Listserv (which you should join) asked:
WIPO (or the ISA) changed the title of my PCT application. But I can’t work out when/where/how/why it was done. The A2 publication has one title (the one we gave it). The A3 publication has a slightly different title. Interestingly, the change narrowed the title in a similar way to the way the Written Opinion said that the claimed invention should be narrowed. Any suggestions?
First, I can tell you that the ISA did it.
Now to the details.
The most visible tasks carried out by the International Searching Authority are the establishment of the International Search Report and the Written Opinion.
But the ISA does lots of other things that often go unnoticed. As one example the ISA classifies the PCT application into an International Patent Class. The ISA decides whether the Abstract and Title are defective. And if the ISA finds the Title or Abstract to be defective, then the ISA will “establish” a corrected Title or Abstract (or both). As for the Title, see PCT Rule 37 and as for the Abstract, see PCT Rule 38.
The ISA communicates such actions in the International Search Report, which you would have received some weeks earlier than the date you received the A3 publication. In other words, the change of title should not actually be a surprise to you at this point.
Suppose you are not satisfied with the newly established Title or Abstract? Is there anything you can do about it?
In the case of the Abstract, there is an explicit procedure. You can submit proposed modifications to the ISA, so long as you do it within one month of the date of mailing of the ISR. (I am indebted to alert listserv member Cheryl Ferne for pointing this out to me some years ago.) There is, however, no corresponding procedure for the filer that is dissatisfied with the newly established Title.
You could, of course, amend the title at the time of entry into the national phase.
WIPO’s PCT Newsletter had an article in January of 2011 discussing this business of the ISA changing the title. The article points out that if you were dissatisfied with the newly established Title, and if you were already planning to file a Demand, you could ask the IPEA to review the propriety of the Title.
The other situation in which a filer might find the Title or Abstract to be other than what was expected is when a PCT application is published in a language other than English. In such a case, the International Bureau prepares English translations of the Title and Abstract and ISR and includes them in the first publication (the A1 or A2). (The IB also prepares an English translation of the Written Opinion which can be very helpful for those seeking PCT-PPH status in the US.) There is no explicit procedure by which an applicant may seek review of the translated Title or translated Abstract. The usual time to address such concerns would be at the time of entry into the national phase.
The Canadian Patent Office will ignore the title assigned by the ISA and will use only the title as it appears on the first page of the description. If you want a different title, you will need to amend the first page of the description.
Thank you for posting!
In response to the PCT Listserv posting I commented:-
” suggest ignoring it, unless the title is now such nonsense that you might have to fix it in any jurisdiction that cares about the title.
The only requirement at the PCT stage is that of Rule 4.3:-
The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise./i>
In some jurisdictions I have been asked to change the title to recite the types of claim [e.g. A method of X, apparatus for performing method X, and the product produced by method X, and the use of the product produced by method X in the process Y……….]: this looks more like an abstract than a title and is the sort of title that I have seen truncated at the PCT stage by an ISA.
In other jurisdictions the title has a purely indicative function [e.g. EPC Rule 41(2)(b) “the title of the invention ….. shall clearly and concisely state the technical designation of the invention and shall exclude all fancy names” – note, the title is rarely changed on entry into the European regional phase – perhaps because the EPO have read Article 27(1) PCT?].
Most jurisdictions seem to see the title as a purely formal matter of extreme insignificance. In the UK we have to deal with the fact that within a few weeks of filing an application the name of the applicant, the application number and date, and the title are published. This leads to a choice of title for purposes additional to technical information, for example an application might have a title that is true but uninformative [e.g. “Fibers”]; or true and aimed at exciting interest [e.g. “Long nanofibers”]; or even true but stretching credulity [ e.g. “Long nanofibers with potential for use in space elevators”].
In short, unless someone can point to a jurisdiction where the title limits the scope accorded to the claims [Any takers? Is this a US phenomenon?], life offers far more to worry about.