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

Wed Nov 15 05:46:56 UTC 2023

https://www.federalregister.gov/documents/2012/08/14/2012-17907/changes-to-implement-the-inventors-oath-or-declaration-provisions-of-the-leahy-smith-america-invents

Read the section on Applicant.

https://www.uspto.gov/sites/default/files/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf

USPTO note explaining the same.

Been a long time look for a form that is two pages. The supplemental
declaration will have a check box for legal heir. Aia002 I want to say but
look it up.

On Wed, Nov 15, 2023 at 12:34 AM Vivek Ramachandran <
vivramachandran at gmail.com> wrote:

> 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 The old one is no longer valid when the inventor dies.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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