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

Wed Nov 15 06:10:30 UTC 2023

In short, change the applicant under AIA with the declaration and POA and
access resolves itself.

On Wed, Nov 15, 2023 at 12:50 AM Vivek Ramachandran <
vivramachandran at gmail.com> wrote:

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 The old one is no longer valid when the inventor dies.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