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

Fri Jan 3 21:35:48 UTC 2025

Thanks for those who responded in this thread. However, I'm curious what should be done in the following scenarios:

Scenario 1
1. US provisional is filed listing a single corporate applicant.
2. The inventors have not signed an assignment to the applicant by the one-year date and it is not possible to get a signed assignment by the one-year date.
Who should be listed as the applicant(s) on the PCT application?

Scenario 2
1. US provisional is filed listing a single corporate applicant.
2. Some of the inventors signed an assignment and some didn't, and it is not possible to get a signed assignment from the non-signers before the one-year date.
Who should be listed as the applicant(s) on the PCT application?

Will the answer depend on the law/rules of each country? For example, the rules in the U.S. are clear that all entities that have an ownership interest in the application must be named as applicants. This means that if the inventors in either application are not under an obligation to assign their rights, then they should be listed as applicants for purposes of the U.S.

In the scenarios above, is the best practice to name any inventor who has not signed an assignment agreement as an applicant on the PCT application, even if they are under an obligation to assign (under the theory that other countries may not have a similar provision as the U.S. for inventors who are under an obligation to assign)?

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Friday, December 20, 2024 8:37 AM
To: Carl Oppedahl <carl at oppedahl.com>
Cc: Rick Neifeld <richardneifeld at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] For a provisional application, difficulty getting one inventor's signature

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<mailto: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<mailto: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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