[Patentpractice] problem with getting PTO to recognize POAs from joint owners

[David Boundy]

I don't really know the answer to your question, how to un-screw this.  The
first thing I'd look at is whether the shortest path from here to there is
getting agreement to appoint one party as "applicant" and get the Power of
Attorney appointment from that applicant.

I suspect that part of the problem is understanding that under the bizarre
ownership rules in the U.S., percentages don't matter.  50-50 is the same
as 99.9%-0.1%.  In the U.S., a single atom of ownership by a second owner
means that ownership is divided.  Some fraction of divided ownership is all
the PTO cares about (and for that matter, all that will matter for
standing).   (As far as I know, the ONLY thing affected by percentage
ownership is royalty/damages division).  (As far as I know, the U.S. is the
only country with our bizarre "either co-owner can screw the other with no
consequence" ownership structure.)

The PTO doesn't want to be in the business of disentangling clashes between
papers from two applicants/owners.  So for a gajillion years, the PTO has
insisted that it will only conduct business with a single correspondence
address.   (For once, a PTO burdensome rule that has some grounding in
reality.)

On Mon, Feb 26, 2024 at 3:41 PM Dan Feigelson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Provisional application is jointly owned by two entities, A and B, and
> assignments from the inventors employed by A to A and those employed by B
> to B have been recorded; I have the reel/frame numbers for both
> assignments.
>
> The application was drafted by an Israel patent practitioner and was filed
> by a secretary at one of the entities using a provisional cover sheet.  She
> saved the EFS acknowledgement from the filing, but no one bothered to save
> the filing receipt when it arrived.
>
> Since they used a provisional cover sheet rather than an ADS, there was no
> DAS authorization. And since we don't have the filing receipt, I don't know
> what a marked-up ADS would need to look like in this case if we wanted to
> go the marked-up ADS route.
>
> Israel practitioner has since filed a PCT claiming priority from the
> provisional. I have been called in to try to make the provisional available
> via DAS. Under rule 1.14(c), that means I need to have a POA on file,
> giving me access to the IFW. So I submitted (1) a rule 3.73 statement from
> A , indicating 50% ownership (2) a POA from A, (3) a rule 3.73 statement
> from B, indicating 50% ownership, and (4) a POA from B.
>
> After not hearing from the PTO for a month, I called the "applications
> assistance unit" to see if either they hadn't gotten around to processing
> the papers, or if they'd bounced them but, per inscrutable PTO practice,
> had sent the notice by snail mail to the correspondence address they have
> on record (which, of course, neither I nor the applicants are certain of;
> all I know is it ain't me).  After 40 minutes on hold, I got through to a
> living being, who confirmed the PTO sent a bounce letter on February 5,
> which apparently asserted that I hadn't submitted a POA signed by the
> assignee. That, of course, is b.s.  I asked the person what needs to be
> done to fix this and she said didn't know, but would speak with her
> colleague and call me back.  Several hours later, I'm still waiting for the
> callback. (I get the impression the PTO finished training her yesterday.)
>
> I see several possibilities for how to proceed, which may be followed in
> parallel, but I'm curious for input from others.
>
> A. I could call whatever part of the PTO inspects POA submissions and try
> to get direct clarification, but I'm not sure which part that is (and
> neither was the nominally sentient being in the AAU with whom I spoke).
> Does anyone know which part of the PTO is the part responsible for
> reviewing POAs?
>
> B. The rule 3.73 statements said that ownership was 50/50, but the
> assignment records don't indicate percentages. I could revise the 3.73
> statements to indicate unspecified amounts but indicate that parties A and
> B collectively own 100% of the application.
>
> C. The rule 3.73 statements were signed by me. I could have A and B sign
> them.
>
> D. We could (and now plan to) have one of the inventors order a paper copy
> of the provisional. Or does this need to be one of the assignees?
>
> E. We could file a DAS authorization signed by the assignees and hope that
> the PTO processes it, but that wouldn't give anyone access to the IFW. We'd
> need to periodically check WIPO to see if the DAS access had been granted.
>
> Personally, I would never advise to keep the ownership split, and the
> difficulties encountered in the present case illustrate just some of the
> reasons for that. But I don't think I can convince them to assign all
> ownership to a single entity, which might help simplify things.
>
> Curious to hear what suggestions folks have. I will be using this as a
> case study in why it's best to have a pro do the filing of a provisional:
> the bill they'll be getting from me is several times what I would have
> charged to file the provisional.
>
> Dan
> --
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> Patentpractice at oppedahl-lists.com
>
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>


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