409.01(a) Deceased or Legally Incapacitated Inventor - Application Filed on or After September 16, 2012 [R-01.2019]

[Editor Note: See MPEP § 409.01(b) for information pertaining to a deceased or legally incapacitated inventor in an application filed before September 16, 2012.]

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.

Under 37 CFR 1.46, 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. See 35 U.S.C. 118. If the 37 CFR 1.46 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 37 CFR 1.46 applicant can execute the substitute statement. See MPEP § 409.05 for more information. See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a 37 CFR 1.46 applicant in lieu of an oath or declaration.

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. See 35 U.S.C. 117. See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

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.

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 in compliance with 37 CFR 1.64. 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.

409.01(b) Deceased or Legally Incapacitated Inventor- Application Filed Before September 16, 2012 [R-01.2019]

[Editor Note: See MPEP § 409.01(a) for information pertaining to a deceased or legally incapacitated inventor in an application filed on or after September 16, 2012.]

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. See also pre-AIA 37 CFR 1.422.

When an inventor becomes legally incapacitated prior to the filing of an application and prior to executing the oath or declaration required by pre-AIA 37 CFR 1.63 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.

One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with pre-AIA 37 CFR 1.42.

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 pursuant to pre-AIA 37 CFR 1.63 and 1.64.

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.

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 (see MPEP § 402.07).

When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, 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.

This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inventor. See MPEP § 409.01.

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 in compliance with pre-AIA 37 CFR 1.63 and 1.64 (e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citizenship and post office address). 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.

409.03(a) At Least One Joint Inventor Available [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications filed 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 (pre-AIA 35 U.S.C. 111(a) and 115), 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:

• (A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by pre-AIA 37 CFR 1.63 or 1.175 (see MPEP §§ 602, 605.01, 602.09, and 1414) and (2) make oath or declaration on behalf of the nonsigning joint inventor as required by pre-AIA 37 CFR 1.64. An oath or declaration signed by all the available joint inventors with the signature block of the nonsigning inventor(s) left blank may be treated as having been signed by all the available joint inventors on behalf of the nonsigning inventor(s), unless otherwise indicated.
• (B) 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. See MPEP § 409.03(d).
• (C) The last known address of the nonsigning joint inventor must be stated. See MPEP § 409.03(e).

409.03(b) No Inventor Available [R-08.2012]

[Editor Note: This MPEP section is not applicable to applications filed 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. Where pre-AIA 37 CFR 1.47(a) is available, application cannot be made under pre-AIA 37 CFR 1.47(b).

In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited pursuant to pre-AIA 37 CFR 1.47(b) must meet the following requirements:

• (A) The pre-AIA 37 CFR 1.47(b) applicant must make the oath required by pre-AIA 37 CFR 1.63 and 1.64 or 1.175. Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration. 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 oath or declaration is signed by a registered attorney or agent on behalf of a corporation, either proof of the attorney's or agent's authority in the form of a statement signed by an appropriate corporate officer must be submitted, or the attorney or agent may simply state that he or she is authorized to sign on behalf of the corporation. Where the oath or declaration is being signed on behalf of an assignee, see MPEP § 324. An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf. Staegerv. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm'r Pat. 1973). 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. Also, the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).
• (B) The pre-AIA 37 CFR 1.47(b) applicant must state his or her relationship to the inventor as required by pre-AIA 37 CFR 1.64.
• (C) The application must be accompanied by proof that the inventor (1) cannot be found or reached after a diligent effort or (2) refuses to execute the application papers. See MPEP § 409.03(d).
• (D) The last known address of the inventor must be stated. See MPEP § 409.03(e).
• (E) The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application. See MPEP § 409.03(f).
• (F) The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage. See MPEP § 409.03(g).

409.03(c) Unavailable Legal Representative of Deceased Inventor [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

Pre-AIA 37 CFR 1.47 should not be considered an alternative to pre-AIA 37 CFR 1.42 or pre-AIA 35 U.S.C. 117 since the language “cannot be found or reached after diligent effort” has no reasonable application to a deceased inventor. In re Application Papers Filed September 10, 1954, 108 USPQ 340 (Comm’r Pat. 1955). See pre-AIA 37 CFR 1.42 and MPEP § 409.01. However, pre-AIA 37 CFR 1.47 does apply 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 (see MPEP § 409.03(e)).

409.03(d) Proof of Unavailability or Refusal [R-07.2015]

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

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.

Furthermore, the fact that an inventor is hospitalized and/or is not conscious is not an acceptable reason for filing under pre-AIA 37 CFR 1.47. Pre-AIA 37 CFR 1.43 may be available under these circumstances. See MPEP § 409.01(b). Such a petition under pre-AIA 37 CFR 1.47 will be dismissed as inappropriate.

The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted. Copies of documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, telegrams, that support a finding that the nonsigning inventor could not be found or reached should be made part of the statement. The steps taken to locate the whereabouts of the nonsigning inventor should be included in the statement of facts. It is important that the statement contain facts as opposed to conclusions.

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. The fact that an application may contain proprietary information does not relieve the pre-AIA 37 CFR 1.47 applicant of the responsibility to present the application papers to the inventor if the inventor is willing to receive the papers in order to sign the oath or declaration. It is noted that the inventor may obtain a complete copy of the application, unless the inventor has assigned his or her interest in the application, and the assignee has requested that the inventor not be permitted access. See MPEP § 106. 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. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).

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. Statements by a party not present when an oral refusal is made will not be accepted.

Proof that a bona fide attempt was made to present a copy of the application papers (specification, including claims, drawings, and oath or declaration) to the nonsigning inventor for signature, but the inventor refused to accept delivery of the papers or expressly stated that the application papers should not be sent, may be sufficient. When there is an express oral refusal, that fact along with the time and place of the refusal must be stated in the statement of facts. When there is an express written refusal, a copy of the document evidencing that refusal must be made part of the statement of facts. The document may be redacted to remove material not related to the inventor’s reasons for refusal.

When it is concluded by the pre-AIA 37 CFR 1.47 applicant that a nonsigning inventor’s conduct constitutes a refusal, all facts upon which that conclusion is based should be stated in the statement of facts in support of the petition or directly in the petition. If there is documentary evidence to support facts alleged in the petition or in any statement of facts, such evidence should be submitted. Whenever a nonsigning inventor gives a reason for refusing to sign the application oath or declaration, that reason should be stated in the petition. See also MPEP § 1702.

409.03(e) Statement of Last Known Address [R-08.2012]

[Editor Note: This MPEP section is not applicable to applications filed 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.

That address should be the last known address at which the inventor customarily receives mail. See MPEP § 602.08(a). Ordinarily, the last known address will be the last known residence of the nonsigning inventor.

Inasmuch as a nonsigning inventor is notified that an application pursuant to pre-AIA 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the nonsigning inventor may be reached should also be given.

409.03(f) Proof of Proprietary Interest [R-08.2012]

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012. See MPEP §§ 325, 409.05, and 605 for information pertaining to applications for patent filed on or after September 16, 2012 by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.]

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

• (A) the invention has been assigned to the applicant, or
• (B) the inventor has agreed in writing to assign the invention to the applicant, or
• (C) 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. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant. A statement under pre-AIA 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324). An assignment of an application and any “reissue, division, or continuation of said application” does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956). An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).

When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met. A typical agreement to assign is an employment agreement where an employee (nonsigning inventor) agrees to assign to his or her employer (pre-AIA 37 CFR 1.47(b) applicant) all inventions made during employment. When such an agreement is relied on, it must be established by a statement of a person having firsthand knowledge of the facts that the invention was made by the employee while employed by the pre-AIA 37 CFR 1.47(b) applicant.

If the invention has not been assigned, or if there is no written agreement to assign, the pre-AIA 37 CFR 1.47(b) applicant must demonstrate that he or she otherwise has a sufficient proprietary interest in the matter.

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 pre-AIA 37 CFR 1.47(b) applicant. The facts in support of any conclusion that a court would award title to the pre-AIA 37 CFR 1.47(b) applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

409.03(g) Proof of Irreparable Damage [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

Irreparable damage may be established by a pre-AIA 37 CFR 1.47(b) applicant by a showing (a statement) that a filing date is necessary to preserve the rights of the party or to prevent irreparable damage.

409.03(h) Processing and Acceptance of a Pre-AIA 37 CFR 1.47 Application [R-08.2012]

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

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. A filing receipt will be sent to the applicant and the application , or an electronic message concerning the petition under pre-AIA 37 CFR 1.47, will be forwarded to the Office of Petitions, for consideration of the petition filed under pre-AIA 37 CFR 1.47.

When papers deposited pursuant to pre-AIA 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be published in the Official Gazette identifying the application number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s). The U.S. Patent and Trademark Office will notify the nonsigning inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under pre-AIA 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal representative(s). In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated. See pre-AIA 37 CFR 1.47(c). In addition, the notice is not repeated in continued prosecution applications filed under 37 CFR 1.53(d).

409.03(i) Rights of the Nonsigning Inventor [R-08.2012]

[Editor Note: This MPEP section is not applicable to applications filed 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 thereof at the price set forth in 37 CFR 1.19, 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.

While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the application, inter partes proceedings will not be instituted in a pre-AIA 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955). A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972)), and is not entitled to prosecute the application if status under pre-AIA 37 CFR 1.47 has been accorded, or if proprietary interest of the pre-AIA 37 CFR 1.47(b) applicant has been shown to the satisfaction of the U.S. Patent and Trademark Office.

A nonsigning inventor may join in a pre-AIA 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate pre-AIA 37 CFR 1.63 oath or declaration. Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant. See MPEP § 402.10.

The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 must issue to the inventor, and in an application filed under pre-AIA 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955).

If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a pre-AIA 37 CFR 1.47 application 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.

409.03(j) Action Following Acceptance of a Pre-AIA 37 CFR 1.47 Application [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications filed 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. Papers filed by an inventor who did not originally join in the application, and papers relating to its pre-AIA 37 CFR 1.47 status, will be placed in the file wrapper.

In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with pre-AIA 37 CFR 1.63, the oath or declaration will be placed in the application file.

When an examiner receives an application in which a petition under pre-AIA 37 CFR 1.47 has been filed, he or she must check the file to determine that the petition has been decided by the Office of Petitions. If the petition has not been decided by the Office of Petitions, the application, or an electronic message concerning the petition, must be forwarded to the Office of Petitions for appropriate action.

An application filed under pre-AIA 37 CFR 1.47 can be published as a Statutory Invention Registration (provided the request for a Statutory Invention Registration was filed before March 16, 2013).