[Pct] what to do about a missing-inventor issue?

[Rick Neifeld]

Ask yourself "who" filed the Indian provisional applications.  See Paris,
Article 4A.(1):

 Paris Article 4A.(1) - (The Right of Priority, ROP)
Any* person who has duly filed *an application for a patent, or for the
registration of a utility model, or of an industrial design, or of a
trademark, in one of the countries of the Union, *or his successor in title*,
shall enjoy, for the purpose of filing in the other countries, a right of
priority during the periods hereinafter fixed. (As amended on September 28,
1979.)

There is a great deal to be said about this requirement, in EPO and UK
caselaw. What comes to mind from your questions are choice of law, treaty
self-execution, and the parol evidence rule.





On Fri, Feb 21, 2025 at 2:45 AM Carl Oppedahl via Pct <
pct at oppedahl-lists.com> wrote:

> On 2/21/2025 12:27 AM, a new listserv member asks to post anonymously ...
>
> We will be filing PCT applications claiming priority to Indian Provisional
> applications. We've encountered a situation where several inventors are no
> longer with our client and are not reachable.  Do you have any suggestions
> on how to deal with missing-inventor issues for PCT applications? I don’t
> believe we have an assignment for the Indian Provisional, unfortunately.
>
> A first thing to realize is that the PCT would not even need to be
> involved for an issue like this to arise.  Suppose for example that the
> to-be-filed application is merely an ordinary domestic US 111a patent
> application?   In that case one would usually have a goal of doing whatever
> is needed to attend to the question of "who is the owner of the US patent
> application?"
>
> A second thing to consider is whether the law in the relevant country for
> the inventors somehow addresses ownership, perhaps through an
> employee-employer relationship.  I would consult competent counsel in the
> relevant country for the inventors.
>
> A third category of answers does apply in the case where, as here, the
> to-be-filed application is a PCT application.  A PCT application may be
> thought of as a bundle of individual applications directed to the 120 or so
> Designated Offices where (potentially) the national phase might get
> entered.  It is a rare PCT application in which the national phase gets
> entered in every one of those DOs.  I would check with the client to find
> out which DOs are the ones in which the client will wish to enter the
> national phase.  Suppose there are four such DOs.  Then I would consult
> competent counsel in those four places to get destination-specific advice.
>
>
>
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-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
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