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

[Dale Quisenberry]

Thanks to all for your responses.  Very helpful and much appreciated!

And thanks to you, Carl, for posting to the correct listserv.

C. Dale Quisenberry
Quisenberry Law PLLC
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From: Carl Oppedahl <carl at oppedahl.com>
Date: Tuesday, 17 June 2025 at 12:40 pm
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: PPA Applicant Is Individual -- NPA Applicant to be LLC Assignee

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><mailto: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><mailto:patentcenter at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com><mailto: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><mailto: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><mailto:patentcenter at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com><mailto: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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