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I've had to deal with a few situations having multiple applicants. For you to gain access to the provisional application, you will need a POA from ALL applicants.</div>
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Who are the applicants? If the application was filed with a provisional cover sheet, then it is highly likely that the applicants are the inventors because the provisional cover sheet does not include a box to designate an applicant and the inventors are the
default applicants.</div>
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If the inventors are the applicants, then you will need to: (a) file POAs from the inventors or (b) file a request to change the applicants to A and B pursuant to 37 CFR 1.46(c)(2). The latter requires a marked-up ADS, a 3.73(c) statement from each applicant,
and a power of attorney from each applicant. Regarding the marked-up ADS requirement, I seem to recall a provision in the MPEP that the ADS does not need to show all information in the application, just the information that is being changed.</div>
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Oh, and if the Israeli attorney has since filed a PCT, it is highly likely this person listed A and B as the applicants on the PCT application, which will create SAOSIT problems in the EP and maybe elsewhere. </div>
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<div id="divRplyFwdMsg" dir="ltr"><font face="Calibri, sans-serif" style="font-size:11pt" color="#000000"><b>From:</b> Patentpractice <patentpractice-bounces@oppedahl-lists.com> on behalf of Dan Feigelson via Patentpractice <patentpractice@oppedahl-lists.com><br>
<b>Sent:</b> Monday, February 26, 2024 1:40 PM<br>
<b>To:</b> For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice@oppedahl-lists.com><br>
<b>Cc:</b> Dan Feigelson <djf@iliplaw.com><br>
<b>Subject:</b> [Patentpractice] problem with getting PTO to recognize POAs from joint owners</font>
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<div><img width="1" height="1" src="https://gcfagjf.r.af.d.sendibt2.com/tr/op/yJUMS29F7gC9xrz5Bh2Vo7rRB_fP6Dz9j1ayzzgaevl3Kl89U47KjvWFyvI4ZI2ilhetUBJehitD9nr3IIQFFOwG9yZi4hofzihNo7FQwqtsuJCh16aCjXtm0LRtmOvfecyUDOpOpewEHjtb821mFaCn-Wty898eDht8GpzEeRyv6ETpIrCcL6d1Vq73lSsthCZ3psQnq88Ic7jDIm_MrmQg4At_ehju8DsY">
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<div>Provisional application is jointly owned by two entities, A and B, and assignments from the inventors employed by A to A and those employed by B to B have been recorded; I have the reel/frame numbers for both assignments. </div>
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<div>The application was drafted by an Israel patent practitioner and was filed by a secretary at one of the entities using a provisional cover sheet. She saved the EFS acknowledgement from the filing, but no one bothered to save the filing receipt when it
arrived.</div>
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<div>Since they used a provisional cover sheet rather than an ADS, there was no DAS authorization. And since we don't have the filing receipt, I don't know what a marked-up ADS would need to look like in this case if we wanted to go the marked-up ADS route.<br>
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<div>Israel practitioner has since filed a PCT claiming priority from the provisional. I have been called in to try to make the provisional available via DAS. Under rule 1.14(c), that means I need to have a POA on file, giving me access to the IFW. So I submitted
(1) a rule 3.73 statement from A , indicating 50% ownership (2) a POA from A, (3) a rule 3.73 statement from B, indicating 50% ownership, and (4) a POA from B.</div>
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<div>After not hearing from the PTO for a month, I called the "applications assistance unit" to see if either they hadn't gotten around to processing the papers, or if they'd bounced them but, per inscrutable PTO practice, had sent the notice by snail mail
to the correspondence address they have on record (which, of course, neither I nor the applicants are certain of; all I know is it ain't me). After 40 minutes on hold, I got through to a living being, who confirmed the PTO sent a bounce letter on February
5, which apparently asserted that I hadn't submitted a POA signed by the assignee. That, of course, is b.s. I asked the person what needs to be done to fix this and she said didn't know, but would speak with her colleague and call me back. Several hours
later, I'm still waiting for the callback. (I get the impression the PTO finished training her yesterday.)</div>
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<div>I see several possibilities for how to proceed, which may be followed in parallel, but I'm curious for input from others.</div>
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<div>A. I could call whatever part of the PTO inspects POA submissions and try to get direct clarification, but I'm not sure which part that is (and neither was the nominally sentient being in the AAU with whom I spoke). Does anyone know which part of the PTO
is the part responsible for reviewing POAs?</div>
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<div>B. The rule 3.73 statements said that ownership was 50/50, but the assignment records don't indicate percentages. I could revise the 3.73 statements to indicate unspecified amounts but indicate that parties A and B collectively own 100% of the application.</div>
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<div>C. The rule 3.73 statements were signed by me. I could have A and B sign them.</div>
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<div>D. We could (and now plan to) have one of the inventors order a paper copy of the provisional. Or does this need to be one of the assignees?</div>
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<div>E. We could file a DAS authorization signed by the assignees and hope that the PTO processes it, but that wouldn't give anyone access to the IFW. We'd need to periodically check WIPO to see if the DAS access had been granted.<br>
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<div>Personally, I would never advise to keep the ownership split, and the difficulties encountered in the present case illustrate just some of the reasons for that. But I don't think I can convince them to assign all ownership to a single entity, which might
help simplify things.<br>
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<div>Curious to hear what suggestions folks have. I will be using this as a case study in why it's best to have a pro do the filing of a provisional: the bill they'll be getting from me is several times what I would have charged to file the provisional.</div>
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<div>Dan<br>
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