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

[Carl Oppedahl]

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> 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.
>>
>>
>>     -- 
>>
>>
>>     <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_ __| _www.potomaclaw.com
>>     <http://www.potomaclaw.com>_
>>
>>     Articles at http://ssrn.com/author=2936470
>>     <http://ssrn.com/author=2936470>
>>     <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>>
>>     Click here to add me to your contacts.
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>>
>>
>     -- 
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