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   Assignment not by all inventors
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   Author  Topic: Assignment not by all inventors  (Read 1629 times)
SciGuy
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Re: Assignment not by all inventors
« Reply #5 on: Feb 17th, 2006, 12:55pm »
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I'm just a scientist, so I don't know the most important issue.  My guess is that both are issues:
1. He was not named and should have been.
2. He didn't sign away his rights and should have, given that he was an inventor.
 
This is not a pretend application or situation and I think you both got the facts right.  The omitted inventor certianly would have assigned his rights to the company if asked.  My concern is that the assignment might be worthless if he didn't participate in it.  If left as is, there probably would never be a problem.  To be safe though, I'll probaly advise to (1) add him either now in the prov. app or later in the non-prov due in two months (the "no deceptive intent statement won't be an problem) and (2) suggest that the omitted inventor sign away his rights.
« Last Edit: Feb 17th, 2006, 1:06pm by SciGuy » IP Logged
JimIvey
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Re: Assignment not by all inventors
« Reply #6 on: Feb 17th, 2006, 1:08pm »
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IMHO, a provisional application is a pretend application.  You can't claim priority of an entirely imaginary patent application.
 
As far as I know, there are no mechanisms for amending a provisional application.  So, I don't think you can add an inventor.  The provisional application doesn't do anything -- it just sits in a file in the PTO and it ceases to even do that after a year.  I'm not even sure you can send in random pieces of paper that get put in the file.  
 
I think the closest thing you can do to change any provisional application is to file another provisional application with changes effected and claim priority of both the first provisional and the fixed provisional when you file your real patent application.  IMHO, it's best to just include the proper inventors in the real, non-provisional application.
 
A real patent application is one that gets looked at by an examiner, can be fixed or amended by an applicant, and has some hope of issuing as a patent with real, enforceable rights.  Most importantly, a real application satisfies the various requirements of 35 USC, including Section 112.  Most provisional applications don't (or at least don't look like they satisfy Section 112).
 
Oh, for the group:  I recently saw the "best" (or "worst") of lame provisional applications.  I saw an e-mail, from the inventor to an attorney, printed out (complete with e-mail headers, legal fee negotiations, etc.) and an attached Provisional Patent Application transmittal letter.  It never ceases to amaze me what passes for professional patent services these days!
 
Regards.
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James D. Ivey
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JimIvey
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Re: Assignment not by all inventors
« Reply #7 on: Feb 17th, 2006, 1:15pm »
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on Feb 17th, 2006, 12:55pm, SciGuy wrote:
2. He didn't sign away his rights and should have, given that he was an inventor.

I believe the default ownership for a patent is the named inventor(s).  So, failure to sign away rights is not a problem.  On the other hand, failure to name the actual inventors renders the application (and any patent issuing thereon) invalid.  Transfer of ownership rights can happen whenever, and is not even legally required for a patent to be valid.
 
So, if he wasn't named as an inventor, there's no need to assign his rights to perfect the company's title in the application.  However, adding him as an inventor is required to ultimately make the patent valid, and then assigning his rights will be required to perfect the company's title in the patent.
 
Think of it this way:  If you don't patch a hole in the hull of a boat, you don't have to own the patch to own the boat entirely.  However, the boat won't float without the patch, so it's best to patch the boat and make sure you own the patch, rather than steal or borrow the patch.  Then, you'd own the whole patched boat.
 
I hope that clarifies the interplay of those two issues.
 
Regards.
« Last Edit: Feb 17th, 2006, 1:17pm by JimIvey » IP Logged

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James D. Ivey
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Isaac
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Re: Assignment not by all inventors
« Reply #8 on: Feb 17th, 2006, 1:33pm »
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By way of confirming Jim's suggestion...
 
My recollection is that the MPEP suggests that fixing the inventorship of a provisional is unnecessary unless there is no overlap in inventorship with the non-provisional.    
 
Taking care of the assignment is only necessary if there is some reason to believe the inventor won't cooperate by the time you want to file the non provisional.   In either case, I would suggest recording a new assignment with the non-provisional.
 
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Isaac
SciGuy
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Re: Assignment not by all inventors
« Reply #9 on: Feb 17th, 2006, 2:50pm »
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Got it.  1st correct inventorship, either upon filing the non-provisional or via 1.48 (d) so the future patent is valid.  2nd, fix assignment once inventorship is correct.  Thanks for your help.
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