604 Substitute Statements
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(a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of § 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
(2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76, the residence and mailing address of the person signing the substitute statement;
(3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63; and
(4) Unless the following information is supplied in an application data sheet in accordance with § 1.76, also identify:(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
(c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(d) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.
(e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63. The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
An applicant may execute a substitute statement in lieu of an oath or declaration if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration, or cannot be found or reached after diligent effort.
Thus, the following applicant entities may sign a substitute statement on behalf of an inventor when such a statement is permitted in a patent application:
- the inventor’s legal representative, where the inventor is deceased or legally incapacitated;
- the other joint inventors, where the inventor refuses to execute the oath or declaration or cannot be found or reached after diligent effort;
- an applicant who is the assignee or party to whom the inventor is under an obligation to assign, where the inventor is deceased, legally incapacitated, refuses to execute the oath or declaration, or cannot be found or reached after diligent effort; or
- an applicant who is a party who otherwise shows a sufficient proprietary interest in the claimed invention, where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort.
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).
A substitute statement under 37 CFR 1.64 must:
- identify the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and state upon information and belief the facts which such inventor is required to state;
- identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet, the residence and mailing address of the person signing the substitute statement; and
- identify the circumstances permitting the person to execute the substitute statement, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration.
Where an assignee executes a substitute statement, the assignee must supply his/her residence and mailing address.
- If the assignee is a juristic entity, the residence and mailing address of the juristic entity should be used.
- Additionally, if the assignee is a juristic entity, the applicant name and the title of the person executing the substitute statement must be included..
A nonsigning inventor may subsequently join in the application by submitting an oath or declaration.
For nonprovisional international design applications, the requirement to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration.
