[Patentcenter] Access to provisional application of deceased inventor - how?

[Vivek Ramachandran]

Supplemental declaration is the process under AIA. It is also when someone
dies and a legal heir comes along. There is a simple form for that
supplemental declaration. Applicant under AIA can be changed using
supplemental declaration. Additionally AIA changed how this is done. There
is a federal register notice explaining this. You no longer need more than
the form. USPTO assumes good faith unlike earlier under pre AIA where you
needed to prove via petition or otherwise that you are the legal heart.
Read the MPEP section that was posted earlier with the federal register
notice on supplemental declaration. You do need a power of attorney from
the new heir. The old one is no longer valid when the inventor dies.

Supplemental declaration is not just for changing inventors. The MPEP
section I cited to has this information.

Provisionals do not have ADS. So that route does not work. And provisionals
do not need an oath or a declaration. However, there is no prohibition
against a supplemental declaration to change the applicant.

On Tue, Nov 14, 2023 at 10:12 PM Jim Larsen via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> Judi,
>
>
>
> Thanks for your thoughtful response.  U.S. provisional applications are
> never published (although their contents can sometimes be publicly viewed,
> e.g., if cited in a non-provisional).
>
>
>
> The widow is not an inventor in this instance, so changing the inventor is
> not an option.  I’ve looked into submitting a corrected ADS to identify the
> inventor as deceased and identify the widow as applicant (by way of being
> legal representative), but I need PoA to file the ADS.  Perhaps success is
> possible if they are filed simultaneously, but I think I need to prove the
> widow’s legal status as representative of the estate.  Submitting this type
> of legal document on the record has some potential downsides, I believe.
>
>
>
> -Jim Larsen
>
> Attorney
> Larsen IP PLLC
>
> *From: *Goldberg, Judi <jgoldberg at leydig.com>
>
>
> *Date: *Tuesday, November 14, 2023 at 2:02 PM
> *To: *patentcenter at oppedahl-lists.com <patentcenter at oppedahl-lists.com>
> *Cc: *Jim Larsen <jim at larsen-ip.com>
> *Subject: *RE: Access to provisional application of deceased inventor -
> how?
>
> Hi Jim,
>
> Sorry you’re dealing with this.  I thought provisional applications were
> made public after expiration.
>
>
>
> I suggest maybe treating it as a non-expired utility application, and file
> a supplemental marked-up ADS and request to change the applicant or the
> inventor (whichever is appropriate), adding the “deceased” after the
> current inventor’s name and adding his widow as a legal representative.
>
>
>
> The form used to change the inventor reads:
>
>
>
>
>
> I would include the POA and a 373(c) statement with the suppl ADS and
> Request to Change.
>
>
>
> Hope this works!
>
> (IF not, I suggest contacting one of the ombudsman.
> https://www.uspto.gov/learning-and-resources/support-centers/patents-ombuds-office/contact-patents-ombuds
> .)
>
>
>
> Best,
>
> Judi
>
>
>
> *From:* Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On Behalf
> Of *Jim Larsen via Patentcenter
> *Sent:* Tuesday, November 14, 2023 2:54 PM
> *To:* patentcenter at oppedahl-lists.com
> *Cc:* Jim Larsen <jim at larsen-ip.com>
> *Subject:* [Patentcenter] Access to provisional application of deceased
> inventor - how?
>
>
>
> *[External Email]*
>
> I've been trying for weeks to get access to a (expired) provisional
> application on behalf of the widow of the deceased inventor, as there is
> interest in the likely subject matter, given the inventor's renown in his
> field.  There was (as far as we know) no attorney, no co-inventor listed in
> the file, and, obviously, no available record of the application.  I have
> appropriate documentation identifying the widow as a legal representative
> and have filed a power of attorney signed by same.  This resulted in an
> Unauthorized Signature response from the PTO.  After speaking with people
> in the inventor's assistance center, USPTO legal office, and certification
> section I'm no closer to getting access as each PTO contact's respective
> passing the buck has yet to identify someone that actually knows how to
> gain access.  I have only the inventor name and the application number to
> go on.  Any ideas how to get access?
>
>
>
> Best regards,
>
>
>
> -Jim
>
>
>
>
> *James C. Larsen *Attorney
>
> *Larsen IP PLLC*
>
> p: 425.298.6846
>
> e: jim at Larsen-IP.com
>
> w. www.Larsen-IP.com <http://www.larsen-ip.com/>
>
>
> --
> Patentcenter mailing list
> Patentcenter at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
>
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