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

[Carl Oppedahl]

What he said.  Part of what Rick is getting at is that for any patent 
application (in any country) you might want to know "who are the 
inventors?" and you might also want to know "who is the applicant?"  
These might be non-identical.

And yes they present distinct issues.  Yes when you look around to see 
who are the inventors, this triggers a worry about pesky things like who 
actually owns the patent application.  And when you look around to see 
who is the applicant, you find yourself thinking about SAOSIT.

On 2/21/2025 10:33 AM, Rick Neifeld wrote:
> 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;
> This is NOT a confidential and privileged communication.  If you are 
> not the intended recipient, please delete this email and notify the 
> sender you have done so.
>
>
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