[Patentpractice] For a provisional application, difficulty gettign one inventor's signature

[Carl Oppedahl]

Keep in mind you need to record within three months.   See 
https://blog.oppedahl.com/best-practice-recording-us-patent-assignments/ 
.   So I would not foot-drag the recordation, especially given that you 
don't have to pay any government fee to accomplish the recordation.

In the old days when we had to pay a government fee to record patent 
assignments, I know that many of us would play a game of chicken, aging 
the first four assignments, hoping against all hope that the fifth 
inventor would cough up a signature within three months of the earliest 
execution by the four earlier signers.  All to scrimp and save to avoid 
paying an extra $25.  But that fee is gone so that eliminates any good 
reason to foot-drag the recordations.

I figure the longer one waits to extract a signature from an inventor, 
the greater the period of exposure to problems like the inventor getting 
run over by a truck or worse.

Sometimes I have run into situations where the non-provisional is 
admittedly non-identical to the provisional, and I realize that to cover 
the situation fully I would need two assignments -- one for the 
provisional and a second for the non-provisional.  And yes you might say 
"assume for sake of discussion that I do manage to extract a signature 
from the inventor for the non-provisional, then surely that means I can 
forgive myself for having failed to get that inventor to sign the 
earlier assignment for the provisional."

Except at least in my own practice, every single time that I have ever 
played this game (relying on a signature for the non-provisional as the 
excuse for ducking the pursuit of the signature for the provisional), I 
have gotten burned.  Every single time!  The ways that I have gotten 
burned when I play this game have fallen into several categories:

  * I run afoul of Article 4 of Paris, risking a failure to comply with
    SAOSIT.
  * The inventor starts smelling blood in the water, because maybe the
    invention must be really valuable given the second patent filing,
    and so the inventor starts holding the signature ransom.
  * The inventor gets run over by a truck.
  * The inventor has a last day of work and is less cooperative than before.


On 12/19/2024 12:04 PM, David Boundy via Patentpractice wrote:
> I am nine months into my provisional year.   I have assignment from 
> four of five inventors.  The fifth?   Not hostile, but he's just a 
> contractor, no real loyalty to the client.  Ignores emails requesting 
> signature.
>
> If I just record the assignment of four inventors, and put off the 
> fight to get the fifth until it's a nonprovisional and/or PCT, I guess 
> I'm running a risk that he won't sign that either.  But is there any 
> greater consequence to lacking the signature if I wait?   I am just 
> out of vinegar to fight with this guy, and I want to wait to have the 
> fight until its a nonprovisional.
>
>
> -- 
>
>
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