[Pct] SAOSIT Question

[Carl Oppedahl]

On 3/27/2025 10:07 AM, a listserv member via Pct wrote:
> Hoping someone can offer some advice because "SAOSIT" scares me!
>
> A provisional application is filed without an Applicant (for whatever 
> reason)

Nope.  This can't happen.  Every US provisional patent application has 
an applicant.  It might be an inventor.  I think what you mean is "the 
application was not filed with a non-inventor applicant".

> and the one-year anniversary approaches, and a PCT is desired WITH an 
> Applicant, there are no assignments filed to the Applicant in the 
> provisional, should the PCT be filed with:
>
> 1. Inventors as inventors/applicant AND corporate entity as an 
> Applicant, and then file a 92/bis/ after the assignment is recorded in 
> the provisional to remove inventors as applicants (inventors ONLY),  OR
>
> 2. file with inventors as inventors/applicant and add the corporate 
> entity via 92/bis/ as an Applicant after assignments are 
> signed/recorded in the provisional.

What I would do is the following:

 1. Find out from the client where exactly the client is going to want
    to enter the national phase.  Which patent offices?
 2. Seek advice of competent counsel in each of those places as to what
    they recommend.
 3. Keep in mind that in the PCT system, you can specify "who is the
    applicant?" on an office-by-office basis.  Nothing in the PCT system
    requires you to pick some particular applicant mix and apply that
    applicant mix across the board, uniformly across all offices.
 4. After considering step 3, return to steps 1 and 2.

As for step 2, I consider it likely that at least one competent counsel 
will likely say that heaven and earth should get moved before the PCT 
application is filed, to secure appropriate assignments from the 
inventors and to get them signed prior to the filing of the PCT application.

Keep in mind as well that this is not at all a PCT question. This is 
simply a Paris Article 4 question.  Suppose that there was no plan at 
all to do PCT filings.  Instead suppose that the plan was to do some 
number of direct national filings in various places around the world, 
all within the one-year priority period.  In such a scenario, what you 
would want to do is seek advice of competent counsel in each of those 
places.  In other words step 2 would apply anyway.

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