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

[Rick Neifeld]

"put off the fight to get the fifth until it's a nonprovisional and/or
PCT."   Good luck proving the corporate applicant on the PCT is entitled
the Paris priority date, lacking an assignment executed BEFORE the PCT
filing date. Strongly suggest you read *Avoiding Failed Patent Application
Filings, 2023 Paper, Submitted for the NAPP annual meeting July 19, 2023
<https://www.neifeld.com/pubs/Avoiding%20Failed%20Patent%20Application%20Filings,%202023%20Paper.pdf>"
Rick Neifeld, July 19, 2023., section *VI.D. The All Applicants Rule.

Rick




On Thu, Dec 19, 2024 at 2:21 PM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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>
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>
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