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<p>What he said. Part of what Rick is getting at is that for any
patent application (in any country) you might want to know "who
are the inventors?" and you might also want to know "who is the
applicant?" These might be non-identical. <br>
</p>
<p>And yes they present distinct issues. Yes when you look around
to see who are the inventors, this triggers a worry about pesky
things like who actually owns the patent application. And when
you look around to see who is the applicant, you find yourself
thinking about SAOSIT.<br>
</p>
<div class="moz-cite-prefix">On 2/21/2025 10:33 AM, Rick Neifeld
wrote:<br>
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cite="mid:CA++DgCbfzf_MnDRS2c3fVbXx4bKChEtErT_G3gKgKs5gixKuNw@mail.gmail.com">
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<div>Ask yourself "who" filed the Indian provisional
applications. See Paris, Article 4A.(1):</div>
<div><br>
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<div> Paris Article 4A.(1) - (The Right of Priority, ROP)</div>
Any<b> person who has duly filed </b>an application for a
patent, or for the registration of a utility model, or of an
industrial design, or of a trademark, in one of the countries
of the Union, <b>or his successor in title</b>, shall enjoy,
for the purpose of filing in the other countries, a right of
priority during the periods hereinafter fixed. (As amended on
September 28, 1979.)
<div><br>
</div>
<div>There is a great deal to be said about this requirement,
in EPO and UK caselaw. What comes to mind from your
questions are choice of law, treaty self-execution, and the
parol evidence rule.</div>
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<div class="gmail_quote gmail_quote_container">
<div dir="ltr" class="gmail_attr">On Fri, Feb 21, 2025 at
2:45 AM Carl Oppedahl via Pct <<a
href="mailto:pct@oppedahl-lists.com"
moz-do-not-send="true" class="moz-txt-link-freetext">pct@oppedahl-lists.com</a>>
wrote:<br>
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<blockquote class="gmail_quote">
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<div>On 2/21/2025 12:27 AM, a new listserv member asks
to post anonymously ... </div>
<blockquote type="cite">
<div>
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<p class="MsoNormal">We will be filing PCT
applications claiming priority to Indian
Provisional applications. We've
encountered a situation where several
inventors are no longer with our client
and are not reachable. Do you have any
suggestions on how to deal with
missing-inventor issues for PCT
applications? I don’t believe we have an
assignment for the Indian Provisional,
unfortunately.</p>
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<p>A first thing to realize is that the PCT would not
even need to be involved for an issue like this to
arise. Suppose for example that the to-be-filed
application is merely an ordinary domestic US 111a
patent application? In that case one would usually
have a goal of doing whatever is needed to attend to
the question of "who is the owner of the US patent
application?"</p>
<p>A second thing to consider is whether the law in
the relevant country for the inventors somehow
addresses ownership, perhaps through an
employee-employer relationship. I would consult
competent counsel in the relevant country for the
inventors.</p>
<p>A third category of answers does apply in the case
where, as here, the to-be-filed application is a PCT
application. A PCT application may be thought of as
a bundle of individual applications directed to the
120 or so Designated Offices where (potentially) the
national phase might get entered. It is a rare PCT
application in which the national phase gets entered
in every one of those DOs. I would check with the
client to find out which DOs are the ones in which
the client will wish to enter the national phase.
Suppose there are four such DOs. Then I would
consult competent counsel in those four places to
get destination-specific advice.</p>
<p><br>
</p>
<p><br>
</p>
</div>
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</blockquote>
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<span class="gmail_signature_prefix">-- </span><br>
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data-smartmail="gmail_signature">
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<div>Best regards</div>
<div>Rick Neifeld, J.D., Ph.D. <br>
</div>
<div>Neifeld IP Law PLLC<br>
</div>
<div>9112 Shearman Street, Fairfax VA 22032</div>
<div>Mobile: 7034470727<br>
</div>
<div>Email: <a href="mailto:RichardNeifeld@gmail.com"
target="_blank" moz-do-not-send="true"
class="moz-txt-link-freetext">RichardNeifeld@gmail.com</a>; <br>
</div>
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