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michel
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Problem with inventor's assignment
« on: Apr 10th, 2006, 2:21am »
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I am patent attorney in a French company and we filed an US patent with three inventors. One of the inventors that left the company three years ago, don't want to assign his rights to the company. However, due to the French law, the invention made by inventor during his work when he has an inventive mission belongs to the employer. How can I do regarding the forms requested by the USPTO?    Thank you in advance for your help on this matter.
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Bill Richards
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Re: Problem with inventor's assignment
« Reply #1 on: Jul 22nd, 2006, 3:07am »
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It seems you've raised a contract issue, not a USPTO issue.  The PTO does not care about, nor require, an assignment.  The examination and issue process proceeds independently of any assignment or lack thereof.
Are you talking about a Oath/Declaration?  As you're probably aware, the PTO has procedures to deal with inventors who refuse to sign.  I've dealt with them on a number of occasions and it's not difficult.  The MPEP is quite helpful, too.
« Last Edit: Jul 22nd, 2006, 6:19pm by Bill Richards » IP Logged

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Isaac
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Re: Problem with inventor's assignment
« Reply #2 on: Jul 22nd, 2006, 11:28am »
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on Jul 22nd, 2006, 3:07am, Bill Richards wrote:
It seems you've raise a contract issue, not a USPTO issue.  The PTO does not care about, nor require, an assignment.  The examination and issue process proceeds independently of any assignment or lack thereof.

 
Some fairly funky issues can arise regarding who can prosecute can arise if an inventor agrees to sign an oath or declaration for the application but then later refuses to sign the assignment and the power of attorney.  See MPEP 324, and 37 CFR 3.71 and 3.73.  
 
The issues are not fixable using a petition under 37 CFR 1.47 which is invoked only by a refusal to participate in filing the application.
 
 
 
« Last Edit: Jul 22nd, 2006, 11:36am by Isaac » IP Logged

Isaac
Jonathan
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Re: Problem with inventor's assignment
« Reply #3 on: Jul 22nd, 2006, 1:50pm »
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To summarize for the OP: there isn't really anything you can do, for this US application, to compel the inventor to assign his rights or otherwise bypass his refusal to assign.
 
Any corrections to the above statement are of course always welcome.
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Isaac
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Re: Problem with inventor's assignment
« Reply #4 on: Jul 22nd, 2006, 3:41pm »
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on Jul 22nd, 2006, 1:50pm, Jonathan wrote:

To summarize for the OP: there isn't really anything you can do, for this US application, to compel the inventor to assign his rights or otherwise bypass his refusal to assign.
 
Any corrections to the above statement are of course always welcome.

 
I imagine the employee can be sued in a court in France and compelled to assign.  
 
Also the documents supporting an assignment recordable at the PTO might include a copy of the signed employment document establishing the obligation to assign plus evidence establishing that the terms for assignment have been met (perhaps with a petition)
 
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Isaac
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