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[Lana Butenko]

Hello Everyone,

I am the inventor named on a provisional application. There is also an assignee. No one else associated with this provisional application.

My question: How can I find out if the assignee has requested a copy of the provisional application?

I suspect the assignee is sitting on the application with no intent to prosecute just to spite my desire to have a patented invention.

I am sure the assignee has not filed a utility application. At this point, I will be satisfied knowing that he has requested a copy of the application. (I have never given him a copy, so the only way he could get a copy would be from the PTO).

Thanks,
Lana

[JimIvey]

The only way they can get a copy of the provisional application is to be on record as the owner of the application.  They would file a Power of Attorney by Assignee and likely an election to prosecute the application to the exclusion of the inventors.  That's how it's done in real applications.  I don't know to what extent any of that takes place in provisional applications.  But they will need a copy (assuming you didn't given them one and they don't have access to the attorney/firm who filed it) to file the real application.  And, my guess is that they'd have to file those documents to get it.

What that means is that you will no longer be able to access information about the application.  So, if you still have access to the application, they haven't requested a copy.  If you don't have access, they may have requested a copy, or maybe they didn't.  You won't be able to tell.  

The bigger question here is what could the assignee do to affect you?  In theory, the assignment would provide compensation to you for releasing all future interest in the application.  So, it shouldn't matter to you what they do with it.  If it does matter, than the assignment should have made their desired actions pre-conditions to assignment -- or at least affirmitive obligations with some penalty for failing to comply.

Of course, those issues should have been worked out in the assignment before executing it.  If they were, your remedy would be in the language of the assignment itself.

Regards.

[Lana Butenko]

Hi Jim,

Thank you, that was a VERY helpful answer. I have one follow-up question and two additional bits of information. First, I have learned that the assignee has recorded the assignment in the PTO. Second, I am still able to get a copy of the patent myself.

So my question is: How does this mean that the assignee has not requested a copy? (or what MPEP section should I look at?)

Thanks very much,
Lana

[JimIvey]

Hmmm.  I'm guessing they recorded the assignment (like recording a deed with the county recorder's office) but didn't file the Power of Attorney (PoA) which is supposed to revoke your ability to influence prosecution of the application (assuming the proper language is in the PoA).

If there's no hint of animosity between the inventor(s) and assignee, I'll typically wait until I get the reel/frame numbers of the recordation before filing the Power of Attorney.  It takes a while for the PoA to have some effect in the PTO.  So, all this may be under way.

Here's why I think they haven't requested a copy yet.  To get the copy, they have to prove to the PTO that they are entitled to know something about the application.  Proving that you own the application is one way.  The most common way to do that (as far as I know) is to record the assignment and then file the PoA.  After they file the PoA, you shouldn't have any access to the application, assuming they do it right.  However, they can bypass the PoA step and simply submit the assignment (even without recordation) to prove authority to access the application -- especially if time is running out to file the US national and any international applications.  

Now, all this is for non-provisional applications.  I don't do much with provisional applications.  It may be entirely different.  But access to the provisional application (e.g., to get a copy) would require some showing of authority to have such access -- provisional applications are not public.  That's why I think it would be similar.

Good luck.

[Roxanne Alvarez]

My question concerns the release of a copy of a provisional patent application to a co-inventor by the USPTO.

My understanding is that the name of only one of two (or more) inventors need be entered in a provisional patent application (even though I understand that all of the inventors must be named in the non-provisional patent application).

My question is, Is it possible to block a co-inventor who has not been named in the provisional application from having access to a USPTO issued copy of the provisional application?

Thank-you.