[Patentpractice] PPA Applicant Is Individual -- NPA Applicant to be LLC Assignee

[Carl Oppedahl]

This got originally posted to the "patentcenter" listserv which is 
chartered for discussion of bugs in Patent Center.

I think this should originally have gotten posted to the 
"patentpractice" listserv.  I am posting this followup to the 
"patentpractice" listserv.

Now to return to the original question.  The original question is along 
the lines of "I filed a priority application (that happened to be a 
provisional) and I did not make it so that the client was the 
applicant."   And "now I am filing a second patent application (that 
will be a non-provisional application) and I do plan to make it so that 
the client is the applicant."  And "what should I do about the first 
application having been filed with an applicant that was not the client?"

And the answer turns in a very big way on whether or not the two patent 
applications are filed in the same patent office.

If both applications are filed in the USPTO, then the Paris Convention 
does not enter into the discussion.  Instead, what we have is a mere 
domestic benefit situation.  And for that, what we need to do is 
carefully read 35 USC 119e.  Which I have not done recently but I think 
the answer is you need to have at least one inventor in common between 
the first application and the second application.  Which you do have, 
according to your original post.

But now let us suppose the non-provisional application is being filed in 
France or Japan or Great Britain or someplace.  In that case the Paris 
Convention is very much in the discussion.  We have to worry about 
SAOSIT.  And what I would do is consult competent counsel in France or 
Japan or Great Britain or wherever.

Or suppose (as normally happens with nearly all of my own clients) the 
second application (the non-provisional application) is being filed as a 
PCT.  There are about 104 places where you might later enter the 
national phase from the PCT, one of which is the US and the other 103 
are not the US.  As for the US, we can now back up two paragraphs for 
the answer.  It is a mere domestic benefit situation.  As for the other 
103 places (which include Japan and Great Britain) then once again I 
would consult competent counsel to see what they say about SAOSIT.

What is strikingly clear about this is that if only the practitioner can 
manage to file the US provisional so that the client is the applicant, 
than all of these problems disappear.  So the practice tip is, never 
file a US provisional in a way that fails to set it up for the client to 
be the applicant.

On 6/17/2025 10:02 AM, Dale Quisenberry via Patentcenter wrote:
>
> Thank you, Suzannah.
>
> Gotcha.  Sounds like what I normally do for any new NPA.
>
> So there is no need to state in the ADS that the individual inventor 
> was the prior Applicant for the provisional application?
>
> Thanks again!
>
> Dale
>
> *From: *Suzannah K. Sundby <suzannah at canadylortz.com>
> *Date: *Tuesday, 17 June 2025 at 10:59 am
> *To: *For bug reports, feature requests, and tips and tricks about 
> Patent Center. <patentcenter at oppedahl-lists.com>
> *Cc: *Dale Quisenberry <dale at quisenberrylaw.com>
> *Subject: *RE: PPA Applicant Is Individual -- NPA Applicant to be LLC 
> Assignee
>
> You simply need to fill in the Applicant Information which is page 5 
> on the blank ADS form… Also file a POA by the Applicant along with the 
> 3.73 Statement, which means you need to record the assignment from the 
> inventor to the LLC.
>
> *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On 
> Behalf Of *Dale Quisenberry via Patentcenter
> *Sent:* Tuesday, June 17, 2025 11:48 AM
> *To:* For bug reports, feature requests, and tips and tricks about 
> Patent Center. <patentcenter at oppedahl-lists.com>
> *Cc:* Dale Quisenberry <dale at quisenberrylaw.com>
> *Subject:* [Patentcenter] PPA Applicant Is Individual -- NPA Applicant 
> to be LLC Assignee
>
> List mates,
>
> I have a situation where a provisional application was filed in the 
> name of the inventor as the applicant.
>
> The inventor is going to assign the rights in the application to LLC, 
> and then a non-provisional application claiming benefit of the 
> provisional is to be filed naming the LLC as applicant.
>
> I seem to recall there are some gymnastics required relative to the 
> ADS for the NPA.
>
> Can someone remind me what I need to do when filing the NPA?
>
> Thank you.
>
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