[Pct] SAOSIT Question

[David Boundy]

I agree with Carl on the two most important things --
     -- This is a matter of national law in each jurisdiction you
eventually enter, which you can't know
     -- Move heaven and earth to make the problem go away in advance

I took over a case from an attorney who didn't understand this stuff.  She
filed the provisional with the inventor as applicant, then she filed the
PCT with the inventor's company as applicant.  Then my client bought the
application and the problem dumps the problem in my lap.  In my case, the
company was a single member LLC, so it was easy to show that the company
was "successor in title."  My European counsel gave me a doc to have the
inventor sign, which said basically "The application belonged to the
company before the PCT filing date."  Note that it was *not* an assignment
-- he stressed that it must *not* be an assignment after the PCT date.  But
this after-the-fact paper stating before-the-fact title was good enough for
him.

On Thu, Mar 27, 2025 at 12:30 PM Carl Oppedahl via Pct <
pct at oppedahl-lists.com> wrote:

> 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.
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>


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*David Boundy *| Partner | Potomac Law Group, PLLC

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