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Author Topic: Joint inventors not playing nicely together  (Read 435 times)


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Joint inventors not playing nicely together
« on: 10-10-17 at 04:48 pm »

I was referred this matter from the original attorney who feels he is now conflicted out because of a dispute between the joint inventors.

A utility application was filed naming two inventors, with no assignment by either inventor. My client is the first-named inventor. The details are not important, but the second-named inventor apparently believes that the first-named inventor is trying to screw him over. The second-named inventor later filed a POA to One or More of the Joint Inventors. Despite only being signed by the second-named inventor, the USPTO accepted the POA and change of address.

There has been a restriction issued, but no response filed by the second-named inventor(we are now in the first month extension).

I have two questions:

1. Can I somehow get the USPTO to rescind acceptance of the POA since it wasn't signed by both inventors, which I believe would result in correspondence going to my client as first-named inventor?

2. Can I respond to the restriction under 37 CFR 1.34? I don't think so, since I am not authorized by both inventors.

Any other feedback or suggestions would be appreciated.


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  • David H. Madden
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Re: Joint inventors not playing nicely together
« Reply #1 on: 10-10-17 at 10:01 pm »

Caveat: I try to stay WELL away from situations that would require me to dig around in the MPEP and CFRs for answers like this.  It looks like the POA listing fewer than all inventors would be ineffective, but it also looks like you could have a situation where a named inventor isn't applying for a patent, in which case you wouldn't need all the signatures.  The answer to your 1.34 question is similarly murky (to me, at least).  For example, I don't see any reason you couldn't file a response, provided that you clearly state that you only represent one of the inventors.  What the PTO does with that is anybody's guess.

If I was in your shoes, I'd refuse to do anything until the inventor issue is sorted out.  (I wouldn't even offer to represent, and would send a non-representation letter if there was any chance that one or the other inventor might somehow think that I represented him.)

The current dispute is not going to get any easier to solve, so you'll be burning a lot of time on low-value research and work (e.g., figuring out how to work around partially-signed POAs, plus figuring out how to sort out whatever mess the USPTO gives you due to the partially-signed POA).  In addition, it sounds like somebody is likely to be unhappy with the outcome (no matter what it is!) which may turn into getting stiffed on fees if you're lucky, and a bar complaint too, if you're not.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO


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Re: Joint inventors not playing nicely together
« Reply #2 on: 10-11-17 at 04:54 pm »

Thanks, mersenne. I probably should just run away from this as fast as I can.


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