[Pct] Assigning expired provisionals

[James E. Lake]

When a patent owner assigns an entire US and foreign patent family to another entity after completing PCT national phase filings and the PCT national deadline has passed, is there ever a downside to including in the assignment an expired US provisional app to which priority is claimed in the PCT app and, thus, in the national applications/patents?

I can think of two reasons why one WOULD want to include the provisionals in the assignment. Perhaps the national deadline only recently passed and you wish to preserve restoration of the right of priority and avoid any SAOSIT problem for a potentially missed filing. Perhaps the national apps are still pending and you do not know whether the national law requires a subsequent divisional to have SAOSIT with all priority-claimed apps. Others?

Let's say all the national patents are granted and any US patents are issued, should listing the expired provisionals on the assignment still be the automatic action in every circumstance even though it seems odd to assign something that apparently has zero value?

James Lake
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