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

Wed Nov 15 05:50:36 UTC 2023

https://www.uspto.gov/sites/default/files/aia0002.pdf

On Wed, Nov 15, 2023 at 12:46 AM Vivek Ramachandran <
vivramachandran at gmail.com> wrote:

>
> 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 The old one is no longer valid when the inventor dies.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
>>>
>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20231115/518bfee3/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 24972 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20231115/518bfee3/attachment.jpg>