September 18, 2020

Volume X, Number 262

September 17, 2020

Subscribe to Latest Legal News and Analysis

September 16, 2020

Subscribe to Latest Legal News and Analysis

September 15, 2020

Subscribe to Latest Legal News and Analysis

Patent Application Declarations for Unavailable or Uncooperative Inventors

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications.  In other cases, inventors may have a falling out with employers or refuse to cooperate in signing declarations.  If patent applicants cannot acquire declarations from these unavailable or uncooperative inventors, significant difficulties may arise in patent prosecution, such as delayed issuance or application abandonment.  Fortunately, the USPTO provides for applicant control of patent prosecution by filing a substitute statement in the event a declaration cannot be obtained. This article summarizes the requirements of substitute statements and identifies pitfalls to avoid in preparing and filing substitute statements.

Substitute Statements

Applicants have the option of filing a substitute statement for unavailable inventors listed in applications filed on or after September 16, 2012.  A substitute statement may be submitted where an inventor is deceased, is legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute a declaration. 35 U.S.C. § 115(d)

In cases where an inventor refuses to execute or cannot be found after diligent effort, the substitute statement may only be filed if the applicant is an assignee, an inventor on the same application, a party to whom the inventor is under an obligation to assign, or a party who otherwise has sufficient proprietary interest.  MPEP § 409.02MPEP § 409.05

In cases where the inventor is deceased or legally incapacitated, the substitute statement may only be filed if the applicant is an assignee, a legal representative, a party to whom the inventor is under an obligation to assign, or a party who has sufficient proprietary interest.  If a legal representative of the inventor exists, then the applicant is not required to involve the legal representative. MPEP § 409.01(a).

A substitute statement must be filed before paying the issue fee or as otherwise outlined in the Notice of Allowability.  For national stage applications, the applicant must file the substitute statement no later than the filing of a Request for Continued Examination (RCE).

Substitute Statement Requirements

In addition to complying with the requirements of 35 U.S.C. § 115(b), the executor of the substitute statement must: 1) identify the person executing the substitute statement and the relationship to the non-signing inventor; 2) identify the basis for which a substitute statement is required; 3) acknowledge the penalties clause under 37 C.F.R. 1.64(e); 4) identify the inventor to whom the statement applies; 5) review and understand the contents of the application (including the claims); and 6) be aware of the duty to disclose to the USPTO all information known to the person to be material to patentability as defined in 37 C.F.R. 1.56.

Additionally, the legal name of each inventor is required in the substitute statement if not already provided in an Application Data Sheet (ADS).  The last known mailing address and the residence of both the executor of the substitute statement and the non-signing inventor (unless deceased or legally incapacitated) are required if not already provided in the ADS.

If a substitute statement is required on the basis that the inventor cannot be reached with diligent efforts, the USPTO may require that evidence be provided showing why the inventor is unavailable and the efforts made to contact the inventor.  Remember to document all attempts to have the inventor sign the declaration in the event that the USPTO requests evidence submission after the filing of a substitute statement.  Examples of such documentation are sent emails, U.S. mail return receipts, mail tracking number receipts, and mail tracking provided online by the mail service used to mail declaration information to an inventor.

Substitute Statement Alternatives

A signed assignment may serve as a declaration if the assignment includes the information and statements required in 37 C.F.R. 1.63(a) and if a copy of the assignment is recorded in the USPTO’s assignment database.  A copy of an inventor’s declaration from a prior application in a benefit chain may also serve as a declaration for the unavailable inventor if the declaration meets all required declaration requirements.  A prior declaration may be insufficient if, for example, the prior declaration is for an application subject to pre-AIA rules and the instant application is subject to post-AIA rules, which have different declaration language requirements than pre-AIA rules.

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights by filing a substitute statement. Before filing a substitute statement, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 258

TRENDING LEGAL ANALYSIS


About this Author

Christina Sperry, Mintz Levin Law Firm, Boston, Medical Tech and Intellectual Property Law Attorney
Member

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...

617-348-3018
Mark D. Hammond Intellectual Property Attorney Mintz, Levin, Cohn, Ferris, Glovsky and Popeo San Diego, CA
Associate

Mark is an intellectual property attorney and registered patent agent with a background in engineering. He focuses his practice on patent prosecution, patent office proceedings, and patent litigation support. He works primarily with clients in the semiconductors, electronics, software, and medical devices industries.

Prior to joining Mintz, Mark worked as an associate in the San Diego office of a Seattle-based international law firm. He also worked as a summer associate with intellectual property law firms in Houston and Salt Lake City and served as a summer intern in the Madrid office of a global law firm.

Before attending law school, Mark worked as a DRAM product and yield enhancement engineer with a computer memory and computer data storage manufacturer.

As an undergraduate, Mark interned at a company that provides systems engineering services for aerospace vehicles. Through a cooperative education program, he also worked as an RF test engineer and a reliability engineer for a company that manufactures secure networked communication solutions. At the University of Utah, Mark served in an Undergraduate Research Opportunities Program assistantship and received a Merrill Engineering Scholars Fellowship.

RELATED PRACTICES

  • Patent Prosecution & Strategic Counseling
  • Patent Prosecution
  • Patent Portfolio Strategy

RELATED INDUSTRIES

  • Technology
  • MedTech, Tools, and Devices
  • Semiconductors
858.314.1086