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Author Topic: Power of attorney issue  (Read 379 times)

Rheo

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Power of attorney issue
« on: 05-18-17 at 06:35 am »

An application was filed because of time pressure by a law firm that doesn't want the application and may have a conflict of interest (that hasn't been clarified yet). I have applications pending for some of the same inventors, and the law firm wants to turn the application over to me. I am not in this law firm.

Unfortunately, the inventors are now all at each other's throats. POAs from all of them will not be possible, although the main inventors want me to take over the application, and the remaining inventor doesn't care one way or the other, that person just want to obstruct things.

Any advice on this? Any way of getting the application turned over from the law firm to me?
« Last Edit: 05-19-17 at 01:08 am by Rheo »
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Rabid Levity

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Re: Power of attorney issue
« Reply #1 on: 05-18-17 at 07:51 am »

My first thought is - RUN.  I.e., you will be in an untenable situation with inventors at each others' throats, and that eventually they'll be at your throat (especially with a likely scanty specification, and drawn up in haste as you suggest, and troubles in prosecution).  Or try to drag you into the midst of their squabbles.

At a minimum, if this firm wants to transfer it to you, put the responsibility on the firm of obtaining all necessary POAs in your name.
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smgsmc

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Re: Power of attorney issue
« Reply #2 on: 05-18-17 at 07:56 pm »

Did all of the inventors execute assignments?  If so, were they all assigned  to the same entity?
« Last Edit: 05-18-17 at 08:11 pm by smgsmc »
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Rheo

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Re: Power of attorney issue
« Reply #3 on: 05-19-17 at 01:06 am »

The advice to RUN is good advice, but I have relationships with intermediary attorneys in this situation.

The inventors have not filed declarations (yet). The situation is that one inventor died, two inventors are in agreement, and one inventor is not in agreement and is just trying to obstruct and block for whatever reason.

I see that there are ways to become an applicant with "sufficient proprietary interest" (e.g. 37 CFR 1.46), and maybe one of the inventors who wants a patent can be named applicant in that way. The sole applicant could then easily give and revoke powers of attorney. A substitute declaration could then be filed for the recalcitrant inventor.

Does anyone have any experience with this kind of thing?
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bluerogue

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Re: Power of attorney issue
« Reply #4 on: 05-19-17 at 01:35 am »

It's messy, and RUN seems to be the best advice here. 

Look to MPEP 402.10 and 409 for how to deal with some of this.

Edit: More specifically 409.03 provides for when an inventor is unwilling to join an application.
« Last Edit: 05-19-17 at 01:37 am by bluerogue »
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

Dazed-n-confused

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Re: Power of attorney issue
« Reply #5 on: 05-19-17 at 10:54 am »

Do you have good (documentary) evidence of what Mr. Recalcitrant's specific contribution to the invention was, and if so, can you (re)draft the claims around him?

Of course, this will only work if his contribution was subsidiary to the main invention.
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smgsmc

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Re: Power of attorney issue
« Reply #6 on: 05-19-17 at 05:36 pm »

The advice to RUN is good advice, but I have relationships with intermediary attorneys in this situation.

The inventors have not filed declarations (yet). The situation is that one inventor died, two inventors are in agreement, and one inventor is not in agreement and is just trying to obstruct and block for whatever reason.

I see that there are ways to become an applicant with "sufficient proprietary interest" (e.g. 37 CFR 1.46), and maybe one of the inventors who wants a patent can be named applicant in that way. The sole applicant could then easily give and revoke powers of attorney. A substitute declaration could then be filed for the recalcitrant inventor.

Does anyone have any experience with this kind of thing?

Procedures changed post-AIA.  I hope someone with post-AIA experience will reply.  In case no one does, here's my advice from my pre-AIA experience.  Then you had to file a petition under 37 CFR 1.47 along with proof that you tried to get the inventors to sign papers and that they refused.  That has been done away with post-AIA, but MPEP 604 does have the following caveat with regard to the post-AIA substitute statement:

"A non-inventor applicant need not submit proof of the permitted circumstance to file a substitute statement (e.g., inventor’s death certificate to establish that a named inventor is deceased). However, where the permitted circumstance identified in accordance with 37 CFR 1.64(b)(3) is other than the inventor’s death or legal incapacity, the inventor must have refused to execute the oath or declaration, or applicant must have exercised diligent effort to find or reach the inventor. Though proof is not required to be submitted to the Office, proof of attempts to secure the inventor’s signature should be kept in applicant’s file. There is no change to what is considered a good faith attempt to contact an inventor and what constitutes a refusal to sign."

So, according to the above, even though you do not need to submit proof, you should have proof, in case you're called upon to provide it.

In my case, one of the inventors was being let go by his employer.  He was asked to sign papers for a patent application before he left.  But he refused (he was holding out for a sweet deal, but his employer wouldn't bite). As patent agent, I sent copies of the patent application, including papers for his signature, and a letter from me requesting his signature.  A copy was sent to his new work address, and a copy was sent to his residence, with signature for receipt required.  I got the receipts, proving that he had indeed received the papers.  After two weeks without a response, I sent him an email informing him that I had receipts showing that he had received the papers, and asking him to please sign and return the requested forms.  I didn't expect him to reply, but he actually did me the favor of sending me back email to the effect, "Hell, no, I'm not going to sign anything."  I kept copies of my email and his email in the file folder.  I then filed the petition, along with an affidavit from me documenting the steps I had taken, and entered the proof as evidence (copies of all the papers, copies of the delivery receipts, and copies of our email exchange).  The petition was granted without incident.
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