[Pct] SAOSIT Question

Fri Mar 28 00:09:02 UTC 2025

Your " European counsel " is relying upon EWHC case law.  Accord Healthcare
Limited v. Research Corporation Technologies, Inc., HP-2016-000038 (EWHC
11/7/2017), citing earlier cases back to the root case, Edwards
Lifesciences AG v Cook Biotech Inc., HC08 C 00934, (EWHC 6/12/2009),
Kitchin, Judge) ( holding that equitable title to the Paris priority
application at the time of the second filing is "good enough").

I have not heard that the EPC, or any other national court, has made a
similar holding.  Have they?  If not, your after-the-fact paper stating
before-the-fact title may have limited territorial effect.

Rick

On Thu, Mar 27, 2025 at 12:44 PM David Boundy via Pct <
pct at oppedahl-lists.com> wrote:

> 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.  ... after-the-fact paper stating before-the-fact title ...  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.
>> --
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>>
>
>
> --
>
>
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