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[69Camaro]

Hi all:
I think this might have been answered before but I can't find it in the MPEP, etc.  Before becoming a patent examiner, I was a patent agent. I filed a provisional application for an invention I concocted three months ago.  However, I will be accepting a position at the PTO this coming September.  I suspect I won't be able to proceed converting this provo to a regular utility if I own it as an examiner (BTW, this wouldn't be coming from the same art unit I will be working in).  This patent may be potentially valuable and I do not want to let it go to abandonment upon the one year deadline of the provisional.  A friend who is not an examiner or a practitioner has proposed he would be willing to form a partnership with me into an LLC or corporation and I would assign the provisional to the corporation and he would take care of converting the provisional over to a regular utility application.  Any issues here? Can anyone cite the MPEP or Rules? I appreciate this.

[Jonathan]

I don't have any comment on your proposal to get around the PTO limitations on employees aiding in prosecution of patent applications.

The relevant MPEP sections you are looking for are 1702 and 309.

Specifically, rule 10.10 section d - (d) An employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the Office.

309 merely repeats 35 USC 4:

Restrictions on officers and employees as to interests in patents.

Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.

[horsechute]

I agree with JD. If it were me I would make a full disclosure to my SPE and to OED
ASAP - like immediately - and let them do what they want. And also keep good documentation. At least that way, if they want to do something like suspend prosecution, you may decide you would rather pursue your business than work for the PTO, not that I am trying to keep you from going to work there. But if it were me, I would view it as an absolute must to fully inform them.

[still_studying]

When I talked with the USPTO, I was told that I would have to explicitly abandon any pending applications in which I might have any future financial stake.

This probably would not apply if you worked for, say, Motorola and had a few patents or applications that were assigned to Motorola, not even if you still have a few shares of Motorola stock.  However, if you are an independent inventor, or have a significant ownership stake in a firm that holds a patent or application on which you were an inventor, you might have to make a choice between abandoning your patent/application and a job at the USPTO.

BTW, their reasoning is simple: a USPTO employee cannot have an incentive to block, or otherwise interfere with, other inventors' applications.  If you own the patent on the world's greatest existing mousetrap, and someone else invents a better one while you work there, they don't want you examining that new application, or asking the examiner who is to stall it or reject it out of hand.