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I have an Invention ... Now What?
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   A invents X....
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   Author  Topic: A invents X....  (Read 702 times)
Ralph Cramden
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A invents X....
« on: Dec 15th, 2006, 6:06am »
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Inventor B hires inventor A to invent invention X.  A assigns ownership in X to B.  B makes inventive contribution and patent application is filed naming A and B as inventors, and application is assigned wholly to B.
 
The application directed to X is found to be allowable, and the issue fee is paid.   Then Inventor A dies, and Inventor B then makes seemingly-patentable improvement to X prior to issuance of patent on X, and determines he still has at least two weeks before the patent on X issues.
 
Inventor B files CIP application, containing all disclosure of application directed to X, plus new drawings figures, description and claims, and claims priority to the filing date of the first application directed to X.
 
Is there anything wrong with the above ?  Does inventor B need to file a petition relative to the death of inventor A, since he is not able to sign the declaration of the CIP ?
 
Thanks,
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Isaac
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Re: A invents X....
« Reply #1 on: Dec 15th, 2006, 7:19am »
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on Dec 15th, 2006, 6:06am, Ralph Cramden wrote:
Is there anything wrong with the above ?  Does inventor B need to file a petition relative to the death of inventor A, since he is not able to sign the declaration of the CIP ?

 
 
B will most probably need a new assignment for his CIP and must deal with not having A's signature via a petition.
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Isaac
ChrisWhewell
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Re: A invents X....
« Reply #2 on: Dec 15th, 2006, 7:40am »
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Yes, and this is a good reason in favor of having language in the original assignment that assigns ownership in all continuations, divisions, utility models, etc....
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Chris Whewell, M.S.
Wiscagent
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Re: A invents X....
« Reply #3 on: Dec 15th, 2006, 5:39pm »
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Isaac responded: B will most probably need a new assignment for his CIP and must deal with not having A's signature via a petition.
 
If I am correctly understanding the scenario presented by Norton's neighbor, then I respectfully disagree with Isaac.  
 
"A" is not an inventor of the CIP.  While the specification probably describes some of A's work, even if "A" were still available, there would be no need for him to sign any of the paperwork associated with the application.
 
Regarding the assignment, as non-inventor the defalt would be that "A" has no rights to the invention.  Certainly A's earlier assignment of the parent case to "B" would not change that defalt.
 
Am I missing something?
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Richard Tanzer
Patent Agent
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