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[bluesky]

Hypothetical

Provisional application names Inventor A as the inventor.

Inventor A dies.

The non-provisional application is filed naming A, B, C, and D as inventors.  

Since A is deceased and no legal representative signed on his behalf.  B, C, and D are the named inventors on the non-provisional application and resulting patent issued therefrom.

QUESTIONS:  The non-provisional claims priority to the provisional.  Was this claim proper given there was arguably no common inventor?  Can it be corrected by adding the deceased inventor to the non-provisional (assuming of course he is an inventor for the non-provisional)?  The deceased inventor's legal representative could sign on his behalf.  

Any input would be appreciated.  

My initial thought is that the answer is no the priority claim was not proper.   See the "an inventor or inventors named in the provisional application" language.

35 USC 119 states:

(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title

[JimIvey]

Being deceased doesn't remove A from inventorship.  A should be named in the real patent application.  You should file a petition (Rule 47? ... something like that) for proceeding without A's signature and have B, C, and D sign on her behalf.  If the patent has already issued, I would suggest looking into reissue to correct a defect made without deceptive intention.  Otherwise, the patent is arguably invalid under 35 USC 102(f).

Regards.

[Isaac]

Perhaps the question was meant cover a slightly more subtle point.  The non-provisional was filed with A, B, C, and D as the inventors, but issued with B, C, and D.  

As Jim suggests, A should not be removed because he was deceased, but (with a tweak to the facts as given) A might correctly and rightly be removed if the claims in the patent as issue do not recite any subject matter invented by A.

Were that to happen, the cited portion of 119 describes requirements to be met at the time of filing of the non provisional.   Because the pendency and common inventor requirements were met at filing, the priority claim is proper even if A must later be removed from the application.

[bluesky]

Many thanks for your replies.

First, let's definitely assume that A is still an inventor of the application.  I meant to make that clear.

Inventor A was named as an inventor on the original application transmittal.  But since he was dead and no legal representative signed the declaration on his behalf, the application proceeded with B, C, and D as inventors and issued as such.

I am satisfied that since the original application transmittal named A as an inventor, the priority claim was proper.

You mentioned a reissue, I believe the correct redress in under 35 USC 256

U.S.C. §256 states:

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

The only problem I could foresee is getting ALL of the inventors (parties) to sign the requisite documents assuming all the facts provided clear and convincing evidence to support the correction.

[Isaac]

I am satisfied that since the original application transmittal named A as an inventor, the priority claim was proper.

This pushes pretty hard on the words of the statute.  Given the requirement for a declaration, one might argue that the filing of the application was not complete until the declaration with only three inventors was received even though the PTO did give you a filing date.  I agree that the literal words of the statute support your interpretation, but I hope never to have to rely on that, and in an appropriate case, I could imagine arguing the opposite for a defendant.

[ChrisWhewell]

It also depends on the claims (if any) in the provisional application.  If there were no claims (as provisionals do not require), then there should be less trouble.  Other situations are where the provisional's claims are identical to those in the non-provisional, are less than, or are more than those in the non-provisional.  Inventorship is determined by contribution to the claimed subject matter.  A provisional having no claims presents a fuzzy situation regarding inventorship.  I've never filed one without claims, but some practitioners undoubtedly have.  So, to answer your question with definiteness, you will need to consider the claims in each application !  It could turn out that D is the only proper inventor, if the prosecution results in only D's contribution being ultimately held patentable, even if decedant A were named as sole inventor on the provisional !   No ?

[Isaac]

It also depends on the claims (if any) in the provisional application.

The inventors on a provisional application only need to have contributed to inventions disclosed in the application and need not have contributed to a claimed invention (if any).

See 37 CFR 1.45 (c).

[ChrisWhewell]

The inventors on a provisional application only need to have contributed to inventions disclosed in the application and need not have contributed to a claimed invention (if any).

See 37 CFR 1.45 (c).

Thank you.  The difficulty I see is that it is the claims which define the invention, not the specification.  Argument could be made that contributing to the contents of the specification does not necessarily mean one has contributed to the invention, for example, a lab tech who runs physical property evaluations of products produced via the alleged invention versus prior art methods.   I don't consider that contributing to the invention, but contributing to the spec.

In the absence of claims, I would like to know just how one could go about judging what exactly the purported invention is.   One might consider taking a filed application prepared by F. Lee Bailey, removing the claims from it, and then providing the spec to 10 different patent attorneys and ask them what they belive the invention is.  I wonder what the variance on that would be.  I bet if they were asked to draft a set of claims, that the claims drafted by most of the group would be varied in scope, which of course would reflect that what exactly an invention is, is subjective and objective, but not clearcut one or the other.

Refering to the specification as a meter stick for inventorship, in the absence of claims, would seem to lead one to an omnibus interpretation, which creates opportunity for argument between adversarial parties which might be avoidable by putting claims in the provisional in the first place, and asking each person purported to be an inventor, if they have contributed to the subject matter of at least one claim in that app.

Absent claims, I do not believe an invention can be defined in a manner, which I would not be able to render indefinite, by argument.  Rule 45 should be rejected under 35 USC 112 as being iteself indefinite.

[Isaac]

Thank you.  The difficulty I see is that it is the claims which define the invention, not the specification.  Argument could be made that contributing to the contents of the specification does not necessarily mean one has contributed to the invention, for example, a lab tech who runs physical property evaluations of products produced via the alleged invention versus prior art methods.   I don't consider that contributing to the invention, but contributing to the spec.

I think you are working hard to imagine a problem where in practice no such problem exists.  Until such time as a non-provisional application claiming priority to the provisional is to be filed, the question of who is a true inventor in the provisional is not really a issue of any import.   The provisional is not even going to be published at that stage.   A good faith effort to name the inventor is what is required, and it would be reasonable to answer the question of who can be an inventor in terms of hypothetical claims that are supported by the disclosure.   There is no penalty for error made in good faith here.

When it comes time to claim priority, it is of course necessary to accurately assess inventiorship of the provsional but only to the point of ensuring that there is proper overlap with the non-provisional.  At that time all of the questions about who is a proper inventor of the provisional can be answered in light of the claims in the non-provisional that are supported by the disclosure of provisional.   If the true inventors turns out to be noone named in the provisional, then a correction of the inventorship of the provisional is in order.

[ChrisWhewell]

Thanks again.  I'm really not trying to conjur disagreement, as much as to illustrate the sentiment I harbor that filing a document called a provisional application can be an added source of uncertainty for inventors.

That said, please allow me to share my opinions relative to yours, viz.:

"When it comes time to claim priority, it is of course necessary to accurately assess inventiorship of the provsional but only to the point of ensuring that there is proper overlap with the non-provisional."

In my practices, I would never wait until time comes to claim priority, to accurrately assess the inventorship of a provisional application.   The gap of time between provisional filing, and conversion to non-prov or re-Submission of beefed-up spec can allow memories to cloud, people to leave the company, inventors to die, etc.  By filing claims in the provisional, I know exactly what the inveniton is, and who the inventors are.  If someone else feels they should be an inventor, then they're asked what their contribution is to the existing claims, or new claims are added.  

"At that time all of the questions about who is a proper inventor of the provisional can be answered in light of the claims in the non-provisional that are supported by the disclosure of provisional."  Maybe, but not always are claims in the non-prov supported by the provisional.  Your preference is a matter of style.  As for me, I like to put inventorship issues to bed early, by documenting who contributed what and including at least one claim, which I find to be a simple academic exercise.   I've never filed a case without a claim in it.

"If the true inventors turns out to be no one named in the provisional, then a correction of the inventorship of the provisional is in order. "  True inventors - presumably are those who contributed to the subject matter of a claim that has been found allowable.  Of course people can invent things, but not all inventions are patentable.  Focusing on patentable inventions, the inventors of claims directed to same might not necesarily be added to a provisional after allowance.  Consider, A invents X, and B, working for same company later reads the provisional spec that claims X.  B modifies X to X2 and patnet applicaiton is filed naming A and B and claiming X and X2.  During prosecution, X is found in prior art, but X2 is not and X2 is deemed patentable.  Amending the provisional to name B would not be proper here.

Isn't this wonderful, so many potential scenarios.  I did the above just for the mental calisthetics, but also to illustrate that provisional applications can add more uncertainty to an already-uncertain endeavor.   For those who like to complicate their patent lives, I stand aside.   Personally, I've concluded that by always including at least one claim in the provisional, that headaches can usually be eliminated.  The spec is still there, just as if the claim weren't, and if the spec supports something else, having a claim won't change that a bit.

cheerio,

Chris Whewell

[Isaac]

In my practices, I would never wait until time comes to claim priority, to accurrately assess the inventorship of a provisional application.

IMO if you should at least have some potential claims in mind when writing a provisional.   That ought to allow you to associate proper inventors with the provisional regardless of whether you actual provide the claims with the provisional application.

However, when you do file the non-provisional, nothing limits you to filing the same claims as were filed with the non-provisional.   You have to revisit the issue upon filing the non-provisional.   Further, a single provisional might support multiple non-provisionals just as a single non-provisional might support more than one continuation/divisional.  Inventorship has to be revisited at filing.

Isaac wrote
"At that time all of the questions about who is a proper inventor of the provisional can be answered in light of the claims in the non-provisional that are supported by the disclosure of provisional."  Maybe, but not always are claims in the non-prov supported by the provisional."

  Your preference is a matter of style.  As for me, I like to put inventorship issues to bed early, by documenting who contributed what and including at least one claim, which I find to be a simple academic exercise.   I've never filed a case without a claim in it.

I did not recommend a style or a course of action.    But even if you file a claim, and I'd personally recommend filing at least one for reasons other than discussed here, that does not mean that you won't file different, fully supported claims in the non-provisional.  

But even that is besides the point.   We were not discussing the practitioner's method of practice, but rather whether there was any legally significant ambiguity involved with the current rules.   Nothing in your current post suggests that rule 45 is unworkable.

 Consider, A invents X, and B, working for same company later reads the provisional spec that claims X.  B modifies X to X2 and patnet applicaiton is filed naming A and B and claiming X and X2.  During prosecution, X is found in prior art, but X2 is not and X2 is deemed patentable.  Amending the provisional to name B would not be proper here.

You are introducing a completely different issue here.    

As we have previously agreed, inventorship is not determined by what is patentable, and nothing in my remarks here suggests amending inventorship on that basis.   Instead I have suggested revisiting and possibly amending the inventorship of the provisional based on what is claimed at the time of filing the non-provisional.

[ChrisWhewell]

That sounds like extra work to me, going back to amend inventorship in a provisional application.  Is it really that nebulous of a concept, this concept of inventorship, that a reasonable practitioner cannot determine inventorship at the time a provisional is filed, in all cases ?    It would be interesting for me to learn of a circumstance where inventorship is non-determinable at the time of filing of a provisional application.   The method I use, is to ask the person who brings the invention to my attention, whether or not anyone else contributed to the inveniton in the claims that I have drafted, and whether the claims seem to cover the entire invention contemplated by the one inventor.   That's for the verbal cases, which were many working triage.    Often, howver, the same questions are asked on the Invention Record form I use.   I've never heard of amend ing the inventorship in a provisional application, and would be interested to learn more.  

[Isaac]

That sounds like extra work to me, going back to amend inventorship in a provisional application.  Is it really that nebulous of a concept, this concept of inventorship, that a reasonable practitioner cannot determine inventorship at the time a provisional is filed, in all cases ?

Changing the inventorship of the provisional is not the desirable thing to do.   But doing so  is available if needed.   If you know exactly what claims you will file with the one or more non-provisionals that might claim priority from the non-provisional, there should be no need to fix the inventorship.   My guess is that in the majority of cases, the practioner can sort out all of the reasonable inventors for all of the most likely claims at the time of drafting the provisional.

But filing a claim with the provisional for the sole purpose of definitively stating the inventorship is simply not required by law.   The law says that claims need not be filed with the provisional.  It might well be that no single claim can do the job anyway.  

In that context you raised the issue that potential inventorship for claims yet to be filed is not determinable from the specification.   While I don't agree you, my point is that even if you are right, nothing of any particular significance results.