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

Fri Dec 20 11:00:53 UTC 2024

That zeros in on my question.  I filed the provisional with the client
company as "applicant."   I have assignments from four of the five
inventors.

The case law in section VI.D is pre-AIA, when "applicant" was the
individual inventors.  So I think I've solved that problem (or rather, I'm
not creating any new problems by waiting until I file the nonprovisional).
(Except the problems Carl mentions in his comment "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!")

Carl's comment is the encouragement I need to flog this horse once again.
I will take a variant on Jamie's approach, I think.  Shame can be a
motivator.

On Fri, Dec 20, 2024 at 12:53 AM Rick Neifeld via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> "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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