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

[Rick Neifeld]

Thank you, Carl.  However, I direct readers to the entire section " VI.
SECURING THE RIGHT OF PRIORITY (ROP)" in my paper. This is because entire
section shows that  a written assignment of a priority document executed
AFTER a PCT application is on file is insufficient to secure the ROP to the
priority document. And the right to prove "equitable or beneficial" title,
see subsection VI.J,  even if one can do so, is not universally
recognized.

On Fri, Dec 20, 2024 at 3:41 AM Carl Oppedahl <carl at oppedahl.com> wrote:

> Thank you Rick for posting.  Yes, folks, Rick is exactly right about this.
> See the webinar that I presented ten days ago (
> https://blog.oppedahl.com/pct-webinars/ ) where I discussed Rick's point
> in some detail.  Part of what Rick is getting at is highlighted by PCT
> Declaration Number 2, discussed at slides 23-38 (available free of charge
> at that page).  A raw recording of the webinar is available free of charge
> (thanks to WIPO) at that web page.
>
>
> On 12/19/2024 10:52 PM, Rick Neifeld 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.
>>
>>
>> --
>>
>>
>> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>>
>> *David Boundy *| Partner | Potomac Law Group, PLLC
>>
>> P.O. Box 590638, Newton, MA  02459
>>
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>>
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>> <http://www.potomaclaw.com>*
>>
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