“Unavailable” Joint Inventor after the America Invents ActMarch 23, 2016

All applications for United States patent must include an oath or declaration signed by each inventor. The oath or declaration must be furnished to the United States Patent and Trademark Office no later than the date on which the issue fee is paid, but preferably on the same day as the non-provisional application is filed to avoid payment of a surcharge. Provisional applications do not require submission of an oath or declaration.

For any number of reasons, including death or legal incapacity, a joint inventor may be unavailable to sign the oath or declaration. Perhaps the most common scenario involves a joint inventor that cannot be located, and/or he or she refuses to join in an application. One can imagine a scorned ex-employee who refuses to assist a previous employer with obtaining a patent.

Regulations addressing unavailability of an inventor changed with the America Invents Act (AIA), and while the procedural requirements have been eased, the substantive law largely remains the same. It remains incumbent on applicants to satisfy the substantive requirements despite the ease with which the issue can be disposed.

Prior to the AIA, if a joint inventor refused to join in an application for patent or could not be found or reached “after diligent effort,”the other joint inventor(s) could make the application for patent on behalf of themselves and the omitted inventor. Doing so required accompanying the oath or declaration (signed by the other joint inventor(s)) with a petition including proof of the pertinent facts and the last known address of the nonsigning inventor. See pre-AIA 37 CFR § 1.47. The pertinent facts most often include the efforts taken to locate the nonsigning inventor or the circumstances surrounding why he or she refuses to file an oath or declaration. Further, thebona fide attempt must be made to comply with the provisions of pre-AIA 37 CFR § 1.47 at the time the oath or declaration is first submitted.

For applications filed on or after September 16, 2012, the substantive law remains the same –i.e., a joint inventor refuses to join in an application for patent or cannot be found or reached “after diligent effort.”However, 37 CFR § 1.64 provides for an applicant to execute a substitute statement in lieu of the oath or declaration for the nonsigning inventor. Furthermore, the USPTO has conveniently provided fillable Form PTO/AIA/02 to comply with the regulations. No petition or proof of pertinent facts need be provided. Yet USPTO Guidance cautions, “An applicant [does] not need to file a petition or provide proof of the pertinent facts in order to be named as the applicant or execute a substitute statement. Though proof is not required to be submitted to the Office, proof of attempt to secure the inventor’s signature should be kept in applicant’s file. There is no change to what is considered a good faith attempt to contact an inventor and what constitutes a refusal to sign.”

Thus, while the administrative burden is eased, one should be careful not to hastily file the substitute statement without making diligent effort to locate the joint inventor. With a substitute statement as part of the prosecution history, a challenger to the later issued patent will leave no stone unturned in litigation and will demand the patent owner establish proof and sufficiency of the pertinent facts present prior to the filing of the substitute statement. While there appears to be no case on point, not making diligent efforts prior to the filing of the substitute statement could result in a court finding the patent unenforceable as a matter of law.

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