[Patentpractice] For a provisional application, difficulty getting one inventor's signature
Carl Oppedahl
carl at oppedahl.com
Fri Jan 3 21:46:30 UTC 2025
On 1/3/2025 2:35 PM, Scott Nielson via Patentpractice wrote:
> 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?
Step 1. Find out in which Designated Offices the client will want to
pursue patent protection from this US provisional.
Step 2. Present the fact pattern to competent counsel in each of those
geographic locations. Receive their advice as to whom to list as
applicant. Print out the advice on paper.
Step 3. In ePCT, click around as necessary to specify the applicant
list individually for each of the patent offices. Carry this out in
such a way as to comply with the advice received in step 2.
So for example the advice for patent office A might be "pick the single
corporate applicant" in which case for patent office A, specify that the
applicant is the single corporate applicant. In contrast maybe the
advice for patent office B might be "specify that the applicant list is
the same as the inventor list" in which case for patent office A,
specify that the applicant list is the inventor list.
One mistake to avoid is assuming, incorrectly, that you are somehow
charged with using the exact same applicant list across all designated
Offices.
>
> 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?
>
Follow same procedure as is specified above for Scenario 1.
> 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/
> <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/
> <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
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> _dboundy at potomaclaw.com
> <mailto:dboundy at potomaclaw.com>_ | _www.potomaclaw.com
> <http://www.potomaclaw.com/>_
>
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