Obtaining Patent Rights For A Deceased Inventor

By: Mark Malek

In my last article, I set forth the details for the process of obtaining a patent when one of the inventors is being uncooperative.  As indicated in that article, each inventor needs to sign an oath or declaration when filing a patent application.  The oath or declaration is a way that the applicant for a patent application tells the world that they believe themselves to be the true inventor.  It’s a little like the honor system, but if you fraudulently sign an oath or declaration, not only is your patent likely invalid, but you could have some criminal issues as well. 

Well, it turns out that my last article needed updating.  Recently, the United States Patent and Trademark Office made the process of dealing with an uncooperative inventor a bit easier.  In fact, there is a simple form that can be filled out to account for the situation involving the uncooperative inventor.  The form is a substitute statement in lieu of an oath or declaration.  On the form, you will need to provide the information about the inventor that will not (or cannot) sign the oath or declaration.  You also need to provide your relationship to the inventor, and the reason why the inventor will not (or cannot) sign the oath or declaration.

On that very same form, one of the available selections is that the inventor is deceased.  Just because an inventor has passed away does not mean that he/she cannot be granted a patent.  For example, suppose that an inventor is working on an invention and is close to having it completed but, unfortunately, passes away.  The other inventors (if there are any) can still file the application and submit the substitute statement on behalf of the deceased inventor.  If there are no other inventors, then the estate of the deceased inventor can always file the application.  In that case, the legal representative of the deceased inventor will have to fill out the substitute statement. The same form can also be used to file an application on behalf of an inventor that has been incapacitated.  Suppose, for example, that an inventor filed a provisional patent application.  Sometime after the provisional patent application was filed, but before the one year due date to convert the provisional patent application into a utility patent application, the inventor becomes incapacitated.  In that case, the legal representative of the inventor can have the provisional patent application converted to a utility patent application on behalf of the inventor, and execute the substitute statement to fulfill the requirements of the inventor filing an oath or declaration.

If you have any questions or need assistance in dealing with an uncooperative inventor, an incapacitated inventor, or a deceased inventor, feel free to contact me. You can also follow me on Twitter, LinkedIn and Facebook for even more information.