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409    Death, Legal Incapacity, or Unavailability of Inventor

MPEP SECTION SUMMARY This section covers instances where the inventor is unavailable including situations where they have died or are considered legally incapacitated.

MPEP SECTION SUMMARY If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

 

I. TERMINATION OF POWER OF ATTORNEY – DECEASED INVENTOR

Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of an inventor who is an applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012.

• A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor-applicant or all powers of attorney in the application have been terminated.

II. PROSECUTION BY ASSIGNEE, OBLIGATED ASSIGNEE OR SUFFICIENT PROPRIETARY INTEREST PARTY

A person to whom the inventor assigned ("assignee"), to whom the inventor was under an obligation to assign ("obligated assignee"), or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of the deceased or legally incapacitated inventor.

• If the applicant is the assignee or obligated assignee of the deceased or legally incapacitated inventor’s interest, or a party who showed/can show a sufficient proprietary interest in the claimed invention, there is no need to involve the legal representative as the applicant can execute the substitute statement.

III. PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor.

• If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

Proof of authority of the legal representative of a deceased or incapacitated inventor is not required.

• Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.

When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.

The terms "Executor" and "Administrator" do not have exact counterparts in all foreign countries, and therefore, those terms must be construed to fit the circumstances of the case.

• Hence, the person or persons having authority corresponding to that of executor or administrator are permitted to make an application.

IV. PROSECUTION BY SURVIVING JOINT INVENTOR-APPLICANTS

When an application is being prosecuted by joint inventor-applicants without a joint inventor-applicant or patent practitioner having been granted a power of attorney, and a joint inventor-applicant dies after filing the application, the living joint inventor(s) who are the applicant must submit proof that the other joint inventor-applicant is dead.

• Upon submission of such proof, only the signatures of the living joint inventor-applicants are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene.
• If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit a substitute statement.
• Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO, until the legal representative and living joint inventors appoint a representative.
  
  

MPEP SECTION SUMMARY This section covers instances where an inventor is deceased or legally incapacitated in applications filed before September 16, 2012. It includes the termination of the power of attorney in situations where the inventor is deceased as well as prosecution by legal representative, proof of authority of administrator or executor, and what happens after the administrator or executor has been discharged. In addition, this section covers exceptions of executors and administrators in some foreign countries, what happens if the inventor of an assigned application dies, and that the intervention of an executor is not compulsory.

 

I.   TERMINATION OF POWER OF ATTORNEY – Deceased Inventor

Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012.

A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated.

II.   PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR

When an inventor becomes legally incapacitated prior to the filing of an application and prior to executing the oath or declaration and no legal representative has been appointed, one must be appointed by a court of competent jurisdiction for the purpose of execution of the oath or declaration of the application.

Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator.

• The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted

III.   PROOF OF AUTHORITY OF ADMINISTRATOR OR EXECUTOR

The Office no longer requires proof of authority of the legal representative of a deceased or incapacitated inventor.

IV.   AFTER ADMINISTRATOR OR EXECUTOR HAS BEEN DISCHARGED

When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.

V.   EXCEPTION IN SOME FOREIGN COUNTRIES

The terms “Executor” and “Administrator” do not have exact counterparts in all foreign countries, and therefore, those terms must be construed to fit the circumstances of the case.

VI.   IF INVENTOR OF ASSIGNED APPLICATION DIES

When an inventor who has prosecuted an application after assignment, dies, the administrator of the deceased inventor’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes

VII.   INTERVENTION OF EXECUTOR NOT COMPULSORY

When an inventor dies after filing an application and executing the oath or declaration the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.

When an application is being prosecuted by joint inventors without a joint inventor or patent practitioner having been granted a power of attorney, and a joint inventor dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead.

Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene.

If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration.

• Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.

MPEP SECTION SUMMARY Joint inventors must apply for a patent jointly, and each joint inventor must make the inventor’s oath or declaration.

MPEP SECTION SUMMARY Discusses the unavailability of the inventor in applications filed before September 16, 2012. Since an application without an oath or declaration executed by all of the inventors may be an incomplete application, an examiner should not mail an Office action in an application without a fully executed oath or declaration unless the application has been accorded status in a written decision on the petition.

 

MPEP SECTION SUMMARY Discusses how to handle instances when the inventor is unavailable, but at least one joint inventor is available in applications filed before September 16, 2012.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

Pre-AIA 37 CFR 1.47(a) and pre-AIA 35 U.S.C. 116, second paragraph, requires all available joint inventors to file an application “on behalf of” themselves and on behalf of a joint inventor who “cannot be found or reached after diligent effort” or who refuses to “join in an application.”

In addition to other requirements of law, an application deposited in the U.S. Patent and Trademark Office pursuant to pre-AIA 37 CFR 1.47(a) must meet the following requirements:

• All the available joint inventors must (1) make oath or declaration on their own behalf and (2) make oath or declaration on behalf of the nonsigning joint inventor.
• The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to execute the application papers.
• The last known address of the nonsigning joint inventor must be stated.

MPEP SECTION SUMMARY Discusses how to handle instances when no inventor is available in applications filed before September 16, 2012.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

Filing under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 is permitted only when no inventor is available to make application.

These provisions allow a "person" with a demonstrated proprietary interest to make application "on behalf of and as agent for" an inventor who "cannot be found or reached after diligent effort" or who refuses to sign the application oath or declaration.

• The word "person" has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation.

A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf.

Where an application is executed by one other than the inventor, the declaration required by pre-AIA 37 CFR 1.63 must state the full name, residence, post office address, and citizenship of the nonsigning inventor.

MPEP SECTION SUMMARY Discusses how to handle instances when the inventor is deceased and the legal representative of the deceased inventor is unavailable in applications filed before September 16, 2012.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

pre-AIA 37 CFR 1.47 applies where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application. In such cases, the last known address of the legal representative must be given

MPEP SECTION SUMMARY Discusses proof of unavailability or refusal of the inventor in applications filed before September 16, 2012.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

I.    INVENTOR CANNOT BE REACHED

Where inability to find or reach a nonsigning inventor "after diligent effort" is the reason for filing under pre-AIA 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.

• The fact that a nonsigning inventor is on vacation or out of town and is therefore temporarily unavailable to sign the declaration is not an acceptable reason for filing under pre-AIA 37 CFR 1.47.

II.    REFUSAL TO JOIN

A refusal by an inventor to sign an oath or declaration when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers.

A copy of the application papers should be sent to the last known address of the nonsigning inventor, or, if the nonsigning inventor is represented by counsel, to the address of the nonsigning inventor's attorney.

It is reasonable to require that the inventor be presented with the application papers before a petition under pre-AIA 37 CFR 1.47 is granted since such a procedure ensures that the inventor is apprised of the application to which the oath or declaration is directed.

• Where a refusal of the inventor to sign the application papers is alleged, the circumstances of the presentation of the application papers and of the refusal must be specified in a statement of facts by the person who presented the inventor with the application papers and/or to whom the refusal was made.

MPEP SECTION SUMMARY Briefly points out how applications filed before September 16, 2012 must state the last known address of the nonsigning inventor.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

An application filed pursuant to pre-AIA 37 CFR 1.47 must state the last known address of the nonsigning inventor.

MPEP SECTION SUMMARY This section discusses proving proprietary interest in applications filed before September 16, 2012 where the inventor is unavailable.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that:

• the invention has been assigned to the applicant, or
• the inventor has agreed in writing to assign the invention to the applicant, or
• the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.

If the application has been assigned, a copy of the assignment (in the English language) must be submitted.

If the invention has not been assigned, or if there is no written agreement to assign, the applicant must demonstrate that he or she otherwise has a sufficient proprietary interest in the matter.

MPEP SECTION SUMMARY This section discusses proof of irreparable damage in applications filed before September 16, 2012 where the inventor is unavailable.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

Irreparable damage may be established by applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.

MPEP SECTION SUMMARY A filing date is assigned to an application deposited pursuant to pre-AIA 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

MPEP SECTION SUMMARY This section discusses the rights of the nonsigning inventor in applications filed before September 16, 2012 where the inventor is unavailable.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

The nonsigning inventor (also referred to as an “inventor designee”) may protest his or her designation as an inventor.

• The nonsigning inventor is entitled to inspect any paper in the application, order copies, and make his or her position of record in the file wrapper of the application.
• Alternatively, the nonsigning inventor may arrange to do any of the preceding through a registered patent attorney or agent.

If a nonsigning inventor feels that he or she is the sole inventor of an invention naming him or her as a joint inventor, the nonsigning inventor may file his or her own application and request that his or her application be placed in interference with the pre-AIA 37 CFR 1.47 application.

• If the claims in both the nonsigning inventor's application and the pre-AIA 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.

MPEP SECTION SUMMARY This section discusses action following acceptance in applications filed before September 16, 2012 where the inventor is unavailable.

 The following section is not applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.

After an application deposited pursuant to pre-AIA 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner.

In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration, the oath or declaration will be placed in the application file.

MPEP SECTION SUMMARY  This section discusses instances where an assignee, obligated assignee, or person with sufficient proprietary interest files a patent application as the applicant in applications filed on or after September 16, 2012.

I.   ASSIGNEE OR OBLIGATED ASSIGNEE

An assignee or obligated assignee may file a patent application as the applicant.

• An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee)

II.   SUFFICIENT PROPRIETARY INTEREST

A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

• The ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the applicant.

 

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