Q: What is a substitute statement in patent applications?

A substitute statement is a document that can be executed in lieu of an oath or declaration in certain circumstances. According to 37 CFR 1.64(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. " This provision allows certain parties to move forward with a patent application when the inventor is unavailable or unwilling to sign the required documents. To learn more: substitute statement patent application oath declaration inventor unavailability To learn more: inventor's oath inventor's declaration joint inventor

Question 1

Who can sign a substitute statement for a deceased or incapacitated inventor?

Accepted Answer

Who can sign a substitute statement for a deceased or incapacitated inventor?

In cases where an inventor is deceased or legally incapacitated, specific parties are authorized to sign a substitute statement. According to MPEP 409.01(a):

"A substitute statement under 37 CFR 1.64 may be signed by the applicant or an assignee of the entire interest on behalf of a deceased or legally incapacitated inventor."

The following parties can sign a substitute statement:

The applicant (if different from the inventor)
An assignee of the entire interest
A person to whom the inventor is under an obligation to assign the invention
A person who otherwise shows sufficient proprietary interest in the matter

It's important to note that the person signing the substitute statement must have the legal authority to act on behalf of the deceased or incapacitated inventor. This ensures that the patent application can proceed even when the original inventor is unable to participate in the process.

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Question 2

Who can execute a substitute statement?

Accepted Answer

Several parties may execute a substitute statement under specific circumstances:

The inventor's legal representative under 37 CFR 1.43, if the inventor is deceased or legally incapacitated
Other joint inventors under 37 CFR 1.45, if the inventor refuses to execute the oath or declaration or cannot be found
An applicant under 37 CFR 1.46 who is the assignee or party to whom the inventor is obligated to assign
An applicant under 37 CFR 1.46 who shows sufficient proprietary interest in the invention

It's important to note that "All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office."

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Question 3

When can a legal representative sign a substitute statement for a deceased inventor?

Accepted Answer

A legal representative can sign a substitute statement for a deceased inventor when they are authorized to act on behalf of the deceased inventor's estate. This typically occurs when the inventor has passed away during the patent application process or before it began.

According to MPEP 604: 'A substitute statement may be made by the legal representative (e.g., executor, administrator, etc.) of a deceased inventor.' The legal representative must be able to show their authority to act for the deceased inventor's estate, which may require providing documentation such as a court appointment or letters testamentary.

It's important to note that the substitute statement must still comply with all the requirements of 37 CFR 1.64, including identifying the deceased inventor, stating the legal representative's relationship to the inventor, and acknowledging that willful false statements are punishable by law.

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Question 4

What options are available if an inventor refuses to sign a patent application?

Accepted Answer

For applications filed on or after September 16, 2012:

An assignee or obligated assignee may file the application as the applicant
A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
The applicant may file a substitute statement in lieu of an inventor's oath or declaration if the inventor has refused to execute the oath or declaration

For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.

Question 5

What is the time limit for filing a substitute statement?

Accepted Answer

What is the time limit for filing a substitute statement?

A substitute statement must be filed within the time period set forth in 37 CFR 1.53(f) or 1.53(d), as applicable. According to MPEP 604:

"The Office has revised the rules to permit applicants to postpone filing an inventor's oath or declaration until the application is otherwise in condition for allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor."

This means that while you can postpone filing the substitute statement, it must be submitted before the application is allowed. It's important to note that the substitute statement is subject to the same time constraints as the inventor's oath or declaration.

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Question 6

What is the difference between a 'corrective document' and a 'substitute statement' for USPTO assignments?

Accepted Answer

The key differences between a 'corrective document' and a 'substitute statement' for USPTO assignments are:

Corrective Document: Used to fix minor errors in the original recorded document.
Substitute Statement: Replaces the entire original document when substantial changes are needed.

According to MPEP 323: "Where errors were made in the execution of the original assignment document ... a 'substitute statement' may be submitted for recordation." The MPEP further clarifies: "The substitute statement must be accompanied by a copy of the originally recorded papers."

For more information on assignment correction, visit: assignment correction.

For more information on substitute statement, visit: substitute statement.

For more information on USPTO, visit: USPTO.

Question 7

What is required for a newly added inventor in a patent application?

Accepted Answer

When adding a new inventor to a patent application, additional documentation is required. According to 37 CFR 1.48(b):

An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.

This means that any newly added inventor must submit either an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64. The specific requirements for these documents depend on the application's filing date. For applications filed on or after September 16, 2012, refer to MPEP § 602.01(a) for oath or declaration requirements and MPEP § 604 for substitute statement requirements.

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Question 8

What is an 'obligated assignee' in patent applications?

Accepted Answer

An 'obligated assignee' in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:

An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor's oath or declaration.

This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.

To learn more:

MPEP 409.05

Question 9

What is a substitute statement in patent applications?

Accepted Answer

A substitute statement is a document that can be used in lieu of an inventor’s oath or declaration under certain circumstances. According to MPEP § 409.05, a substitute statement can be used when the inventor:

Is deceased
Is under a legal incapacity
Cannot be found or reached after diligent effort
Has refused to execute the oath or declaration

The substitute statement must comply with the requirements of 37 CFR 1.64, including identifying the inventor, the person executing the statement, and the circumstances permitting its use.

For more information on inventor’s oath, visit: inventor’s oath.

For more information on substitute statement, visit: substitute statement.

This provision allows certain parties to move forward with a patent application when the inventor is unavailable or unwilling to sign the required documents.

To learn more:

Question 10

What is a substitute statement in patent applications involving deceased or incapacitated inventors?

Accepted Answer

A substitute statement is a document that can be used in place of an oath or declaration in patent applications involving deceased or legally incapacitated inventors. According to MPEP 409.01(a):

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.

The substitute statement can be executed by:

A legal representative of the deceased or incapacitated inventor
An assignee or obligated assignee
A party with sufficient proprietary interest in the invention

This allows the application process to continue even when the inventor is unable to provide an oath or declaration due to death or incapacity. The substitute statement must comply with the requirements set forth in 37 CFR 1.64.

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Question 11

What is a substitute statement in lieu of an oath or declaration?

Accepted Answer

A substitute statement is a document that can be filed in place of an oath or declaration when the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration. According to MPEP 602:

'35 U.S.C. 115(d) provides that 'the applicant for patent' may provide a substitute statement under the circumstances described in 35 U.S.C. 115(d)(2). The applicant for patent is defined in 35 U.S.C. 100(g) as 'the inventor or joint inventors who are applying for a patent through their assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest in the matter.'

The substitute statement must:

Identify the inventor to whom it relates
Identify the circumstances permitting the filing of the substitute statement
Include a statement that the person executing the substitute statement has reviewed and understands the contents of the application
Include a statement that the person executing the substitute statement acknowledges the duty to disclose information material to patentability

This provision allows for the continuation of the patent application process even when the inventor is unable or unwilling to execute the oath or declaration.

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Question 12

What is a substitute statement for a deceased inventor and when is it required?

Accepted Answer

What is a substitute statement for a deceased inventor and when is it required?

A substitute statement is a document that replaces the inventor's oath or declaration when the inventor is deceased, legally incapacitated, or otherwise unavailable. For a deceased inventor, it is required when filing a patent application on or after September 16, 2012.

According to MPEP 409.01(a):

The substitute statement must comply with the requirements of 35 U.S.C. 115(d) and 37 CFR 1.64.

The substitute statement must:

Identify the inventor to whom it applies
Identify the person executing the substitute statement
Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
State the circumstances permitting the person to execute the substitute statement (e.g., the inventor's death)

This statement allows the patent application process to proceed in cases where the inventor cannot personally execute the required oath or declaration.

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Question 13

What is a substitute statement and when can it be used instead of an oath or declaration?

Accepted Answer

What is a substitute statement and when can it be used instead of an oath or declaration?

A substitute statement is a document that can be filed in place of an oath or declaration under certain circumstances. According to MPEP 602:

"When an inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute an oath or declaration, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration."

The substitute statement can be used in the following situations:

The inventor is deceased
The inventor is legally incapacitated
The inventor cannot be found or reached after diligent effort
The inventor refuses to execute the oath or declaration

The substitute statement must:

Identify the inventor to whom it applies
State the circumstances justifying its use
Include an acknowledgment that willful false statements are punishable by fine or imprisonment

It's important to note that the substitute statement must be signed by the appropriate party as specified in 37 CFR 1.64, which may include the applicant or an assignee.

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Question 14

What is a substitute statement and when can it be used in place of an inventor's oath or declaration?

Accepted Answer

A substitute statement is a document that can be used in place of an inventor's oath or declaration under certain circumstances. According to 37 CFR 1.64, an applicant may execute a substitute statement if the inventor:

Is deceased
Is under a legal incapacity
Has refused to execute the oath or declaration
Cannot be found or reached after diligent effort

The substitute statement must comply with specific requirements outlined in 37 CFR 1.64(b), including identifying the inventor, the person executing the statement, and the circumstances permitting its use. For more details on substitute statements, see MPEP § 604.

To learn more:

Question 15

What is a substitute statement and when can it be used in a patent application?

Accepted Answer

A substitute statement is a document that can be used in lieu of an inventor's oath or declaration under certain circumstances. According to MPEP § 409.05, a substitute statement can be used when the inventor:

Is deceased
Is under a legal incapacity
Cannot be found or reached after diligent effort
Has refused to execute the oath or declaration

The substitute statement must comply with the requirements of 37 CFR 1.64, including identifying the inventor, the person executing the statement, and the circumstances permitting its use.

For more information on inventor's oath, visit: inventor's oath.

For more information on substitute statement, visit: substitute statement.

Question 16

What information must be included in a substitute statement?

Accepted Answer

A substitute statement must contain specific information as outlined in 37 CFR 1.64(b):

Comply with the requirements of 37 CFR 1.63(a), identifying the inventor and stating required facts
Identify the person executing the statement and their relationship to the inventor
Identify the circumstances permitting the substitute statement
Provide the last known mailing address and residence of the inventor (if not in the application data sheet)

Additionally, the statement must include 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."

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Question 17

What information must be included in a substitute statement for a deceased or incapacitated inventor?

Accepted Answer

What information must be included in a substitute statement for a deceased or incapacitated inventor?

When filing a substitute statement for a deceased or legally incapacitated inventor, specific information must be included to ensure its validity. According to MPEP 409.01(a) and 37 CFR 1.64, a substitute statement must contain:

Identification of the inventor to whom the substitute statement applies
The circumstances permitting the use of a substitute statement (e.g., death, legal incapacity)
A statement that the person signing:

Has reviewed and understands the contents of the application
Believes the named inventor to be the original inventor of the claimed invention
Acknowledges the duty to disclose information material to patentability

The relationship of the person signing to the inventor

Additionally, the substitute statement must:

Identify the person executing the substitute statement and the capacity in which they are signing
Be signed in accordance with 37 CFR 1.64(a)

Ensuring all required information is included in the substitute statement is crucial for the proper processing of the patent application in cases where the inventor is unavailable.

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Question 18

What happens to a patent application with multiple inventors if one inventor dies?

Accepted Answer

When a patent application has multiple inventors and one of them dies, the process for continuing the application depends on whether there's a power of attorney in place. According to MPEP 409.01(a):

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.

Here's what happens in this scenario:

The surviving inventors must provide proof of the deceased inventor's death to the USPTO.
If no legal representative of the deceased inventor intervenes, only the signatures of the living inventors are required on USPTO documents.
If a legal representative of the deceased inventor intervenes, they must submit a substitute statement complying with 37 CFR 1.64.
Once a legal representative intervenes, signatures from both the living inventors and the legal representative are required on USPTO documents.
This requirement continues until the legal representative and living inventors appoint a new representative.

It's crucial for the surviving inventors to understand these requirements to ensure the application process continues smoothly.

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Question 19

What happens if an inventor refuses to sign the oath or declaration for a patent application?

Accepted Answer

What happens if an inventor refuses to sign the oath or declaration for a patent application?

If an inventor refuses to sign the oath or declaration for a patent application, the applicant may file a substitute statement in lieu of an oath or declaration. According to MPEP 602.01(a):

"A substitute statement may be used in lieu of an oath or declaration if the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or refuses to execute the oath or declaration."

The substitute statement must be signed by an applicant under 37 CFR 1.43, 1.45, or 1.46. It must:

Identify the inventor to whom it relates
Identify the person executing the substitute statement and their relationship to the inventor
Include a statement that the person executing the substitute statement believes the named inventor to be the original inventor
State that the application was made or authorized to be made by the person executing the substitute statement
State the permitted basis for filing the substitute statement (in this case, the inventor's refusal to sign)

It's important to note that attempts to reach the inventor and obtain their signature should be documented, as the USPTO may require evidence of the inventor's refusal to sign.

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Question 20

What happens if an inventor refuses to sign the inventor's oath or declaration?

Accepted Answer

What happens if an inventor refuses to sign the inventor's oath or declaration?

If an inventor refuses to sign the inventor's oath or declaration, the application may still be filed under certain circumstances. According to MPEP 602.01(a):

"If an inventor refuses to execute an oath or declaration or cannot be found or reached after diligent effort, the applicant under 37 CFR 1.43, 1.45 or 1.46 may execute an oath or declaration naming the non-signing inventor."

In such cases, the applicant must:

Submit a substitute statement in lieu of an oath or declaration
Provide evidence of the inventor's refusal to sign or unavailability
Explain the efforts made to contact the inventor

The Office will evaluate the circumstances and may accept the application without the non-signing inventor's oath or declaration.

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Question 21

What happens if an applicant submits both a substitute statement and an inventor's oath?

Accepted Answer

What happens if an applicant submits both a substitute statement and an inventor's oath?

If both a substitute statement and an inventor's oath or declaration are submitted for an inventor, the inventor's oath or declaration will take precedence. The MPEP 604 states:

"If an inventor subsequently files an inventor's oath or declaration meeting the requirements of 37 CFR 1.63 after a substitute statement has been filed, the inventor's oath or declaration will be placed in the application file."

This means that the USPTO will recognize the inventor's own oath or declaration as the official document, effectively superseding the previously filed substitute statement. It's important for applicants to be aware of this to avoid confusion and ensure proper documentation in the patent application process.

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Question 22

What can be done if a joint inventor is unavailable or refuses to join in a patent application?

Accepted Answer

If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, 37 CFR 1.45(a) provides a solution. It states:

"If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor."

In such cases, the other joint inventor(s) can proceed with the application and execute a substitute statement in lieu of an oath or declaration from the unavailable inventor, as outlined in 37 CFR 1.64. For more information on substitute statements, refer to MPEP § 604.

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Question 23

What are the requirements for oaths or declarations in continuing applications filed on or after September 16, 2012?

Accepted Answer

For continuing applications filed on or after September 16, 2012, the following requirements apply:

A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.

As stated in the MPEP, "a new inventor's oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012."

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Question 24

What are the requirements for a substitute statement in lieu of an oath or declaration?

Accepted Answer

A substitute statement in lieu of an oath or declaration must:

Comply with the requirements of 37 CFR 1.63, identifying the inventor or joint inventor with respect to whom a substitute statement is executed, and stating 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.
Identify the circumstances permitting the person to execute the substitute statement.
Include an acknowledgement that any willful false statement made in the substitute statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both.

As stated in MPEP 604: 'A substitute statement under 37 CFR 1.64 must: (1) Comply with the requirements of 37 CFR 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.'

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Question 25

What address should be provided for an inventor who doesn't execute the oath or declaration?

Accepted Answer

In cases where an inventor does not execute the oath or declaration, such as when a substitute statement is filed, the USPTO requires specific address information. According to MPEP 602.08(a):

"In situations where an inventor does not execute the oath or declaration and the inventor is not deceased or legally incapacitated, such as in an application filed on or after September 16, 2012 in which a substitute statement under 37 CFR 1.64 is filed, the inventor's most recent home address must be given to enable the Office to communicate directly with the inventor as necessary."

This requirement ensures that the USPTO can maintain direct communication with the inventor if needed, even when they are not directly involved in executing the application documents.

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Question 26

Is proof required when filing a substitute statement?

Accepted Answer

According to MPEP 604, "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)." However, it's important to note that:

If the circumstance is not death or legal incapacity, the inventor must have refused to execute the oath or declaration, or the applicant must have made a diligent effort to find or reach the inventor.
While proof is not required to be submitted to the USPTO, "proof of attempts to secure the inventor's signature should be kept in applicant's file."

This approach balances the need for truthful statements with practical considerations in patent applications.

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Question 27

How does the USPTO handle errors in the execution of an original assignment document?

Accepted Answer

When errors are made in the execution of an original assignment document, the USPTO allows for the submission of a 'substitute statement' to correct these errors. According to MPEP 323:

"Where errors were made in the execution of the original assignment document ... a 'substitute statement' may be submitted for recordation."

The process involves:

Preparing a new, correctly executed assignment document.
Submitting this as a 'substitute statement' along with a copy of the originally recorded papers.
Clearly identifying the errors in the original document.
Paying the required recording fee.

The USPTO will then record the substitute statement, which effectively replaces the erroneous original assignment document.

For more information on patent assignment, visit: patent assignment.

For more information on substitute statement, visit: substitute statement.

For more information on USPTO, visit: USPTO.

Question 28

How does the MPEP address the issue of unavailable joint inventors for applications filed on or after September 16, 2012?

Accepted Answer

The Manual of Patent Examining Procedure (MPEP) addresses the issue of unavailable joint inventors for applications filed on or after September 16, 2012, in section 409.02. This section provides guidance on how to proceed when a joint inventor is unavailable or unwilling to participate in the patent application process.

Key points from MPEP 409.02 include:

Joint inventors must apply for a patent jointly and each must make an inventor's oath or declaration.
If a joint inventor refuses to join or cannot be found after diligent effort, the other joint inventor(s) may proceed with the application.
A substitute statement can be executed in lieu of an oath or declaration from the unavailable inventor.

For applications filed before September 16, 2012, different procedures apply, which are covered in MPEP § 409.03 et seq.

To learn more:

MPEP 409.02

Question 29

How does an assignee file a substitute statement when an inventor is unavailable?

Accepted Answer

An assignee can file a substitute statement when an inventor is unavailable or refuses to sign the oath or declaration. The process involves the following steps:

Determine if the assignee has the right to make the application for patent as provided in 37 CFR 1.46.
Prepare the substitute statement following the requirements of 37 CFR 1.64.
Include an explanation of the circumstances that make the inventor unavailable or unwilling to sign.
Provide evidence of the assignment, if not already recorded with the USPTO.

MPEP 604 states: 'A substitute statement may also be made by an assignee of the entire interest, an applicant under 37 CFR 1.46(b), or a person who otherwise shows sufficient proprietary interest in the matter, provided that the inventor is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration.'

The assignee must ensure that the substitute statement complies with all requirements, including identifying the inventor, stating the relationship to the inventor, and acknowledging that willful false statements are punishable by law.

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Question 30

How do I correct an error in an oath or declaration?

Accepted Answer

If you need to correct an error in an oath or declaration, the process depends on the nature of the error and when it's discovered. According to MPEP 602:

For minor typographical errors, you can submit a supplemental oath or declaration pointing out the error in the original.
If the error is substantial, a new oath or declaration may be required.
For applications filed on or after September 16, 2012, defects can often be corrected through an application data sheet (ADS).

The MPEP states: 'Applicant may submit a substitute statement in lieu of an oath or declaration as provided for in 37 CFR 1.64 if the requirements of 37 CFR 1.64 are met.'

It's important to address any errors promptly to avoid potential issues during patent examination or enforcement.

To learn more:

Question 31

How can an application be filed when a joint inventor refuses to sign or cannot be reached?

Accepted Answer

For applications filed on or after September 16, 2012:

The other joint inventor(s) may file the application on behalf of themselves and the non-signing inventor.
A substitute statement can be filed in lieu of an oath or declaration for the non-signing inventor.

As stated in MPEP § 409.02: "If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor."

For more information on substitute statement, visit: substitute statement.

Question 32

How can a legal representative file a patent application for a deceased inventor?

Accepted Answer

How can a legal representative file a patent application for a deceased inventor?

For patent applications filed on or after September 16, 2012, a legal representative can file a patent application for a deceased inventor by following these steps:

Submit an Application Data Sheet (ADS) naming the deceased inventor
Include a substitute statement in lieu of an inventor's oath or declaration
Provide documentation showing the legal representative's authority to act on behalf of the deceased inventor's estate

The MPEP states: If an inventor dies during the prosecution of an application, or before an application is filed, the legally recognized representative of the inventor may make the substitute statement. (MPEP 409.01(a))

It's important to note that the legal representative must have the authority to act on behalf of the deceased inventor's estate or other legal entity holding the appropriate rights.

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Question 33

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

Accepted Answer

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

For patent applications filed on or after September 16, 2012, a legal representative can file an application for a deceased inventor by following these steps:

File the application normally, listing the deceased inventor
Submit an Application Data Sheet (ADS) identifying the legal representative
Include a substitute statement in lieu of an inventor's oath or declaration

According to MPEP 409.01(a): "If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent as provided in 37 CFR 1.43." The legal representative must provide documentation of their authority to act on behalf of the deceased inventor.

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Question 34

Can I correct an error in a recorded USPTO assignment document without submitting a new assignment?

Accepted Answer

Yes, you can correct certain errors in a recorded USPTO assignment document without submitting a new assignment. The process depends on the type of error:

For minor typographical errors, use a Corrective Cover Sheet.
For more substantial errors, submit a Substitute Statement.

MPEP 323 states: "The 'corrective document' or 'substitute statement' will not be recorded as a new assignment." Instead, it will be recorded to correct the original assignment document, maintaining the original recordation date.

For more information on assignment correction, visit: assignment correction.

For more information on substitute statement, visit: substitute statement.

For more information on USPTO, visit: USPTO.

Question 35

Can a substitute statement be filed in a provisional application?

Accepted Answer

Can a substitute statement be filed in a provisional application?

No, a substitute statement cannot be filed in a provisional application. According to MPEP 604:

"A substitute statement is not available for provisional applications because provisional applications do not require an inventor's oath or declaration."

Provisional applications have different requirements compared to non-provisional applications. They are primarily used to establish an early filing date and do not require formal claims, oath, or declaration. Therefore, there is no need for a substitute statement in provisional applications.

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Question 36

Can a patent practitioner sign a substitute statement on behalf of a juristic entity?

Accepted Answer

According to MPEP 604, a patent practitioner cannot automatically sign a substitute statement on behalf of a juristic entity. The MPEP states:

"Note: a power of attorney to a patent practitioner to prosecute a patent application executed by the juristic entity does not make that practitioner an official of the juristic entity or empower the practitioner to sign the substitute statement."

For a juristic entity, the substitute statement may be signed by:

A person in the organization with apparent authority to sign (e.g., an officer)
Any person if the statement sets forth that the person is authorized to act on behalf of the juristic entity (e.g., the general counsel)

This ensures that the substitute statement is executed by someone with proper authority within the organization.

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Here’s the complete FAQ:

MPEP 300 - Ownership and Assignment (3)

What is the difference between a ‘corrective document’ and a ‘substitute statement’ for USPTO assignments?

How does the USPTO handle errors in the execution of an original assignment document?

Can I correct an error in a recorded USPTO assignment document without submitting a new assignment?

MPEP 323 - Procedures for Correcting Errors in Recorded Assignment Document (3)

What is the difference between a ‘corrective document’ and a ‘substitute statement’ for USPTO assignments?

How does the USPTO handle errors in the execution of an original assignment document?

Can I correct an error in a recorded USPTO assignment document without submitting a new assignment?

MPEP 400 - Representative of Applicant or Owner (14)

Who can sign a substitute statement for a deceased or incapacitated inventor?

Who can sign a substitute statement for a deceased or incapacitated inventor?

What options are available if an inventor refuses to sign a patent application?

What is an ‘obligated assignee’ in patent applications?

What is a substitute statement in patent applications involving deceased or incapacitated inventors?

What is a substitute statement for a deceased inventor and when is it required?

What is a substitute statement for a deceased inventor and when is it required?

What is a substitute statement and when can it be used in place of an inventor’s oath or declaration?

What is a substitute statement and when can it be used in a patent application?

What information must be included in a substitute statement for a deceased or incapacitated inventor?

What information must be included in a substitute statement for a deceased or incapacitated inventor?

What happens to a patent application with multiple inventors if one inventor dies?

What can be done if a joint inventor is unavailable or refuses to join in a patent application?

How does the MPEP address the issue of unavailable joint inventors for applications filed on or after September 16, 2012?

How can an application be filed when a joint inventor refuses to sign or cannot be reached?

How can a legal representative file a patent application for a deceased inventor?

How can a legal representative file a patent application for a deceased inventor?

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

Patent Law (36)

Who can sign a substitute statement for a deceased or incapacitated inventor?

Who can sign a substitute statement for a deceased or incapacitated inventor?

Who can execute a substitute statement?

When can a legal representative sign a substitute statement for a deceased inventor?

What options are available if an inventor refuses to sign a patent application?

What is the time limit for filing a substitute statement?

What is the time limit for filing a substitute statement?

What is the difference between a ‘corrective document’ and a ‘substitute statement’ for USPTO assignments?

What is required for a newly added inventor in a patent application?

What is an ‘obligated assignee’ in patent applications?

What is a substitute statement in patent applications?

What is a substitute statement in patent applications involving deceased or incapacitated inventors?

What is a substitute statement in lieu of an oath or declaration?

What is a substitute statement for a deceased inventor and when is it required?

What is a substitute statement for a deceased inventor and when is it required?

What is a substitute statement and when can it be used instead of an oath or declaration?

What is a substitute statement and when can it be used instead of an oath or declaration?

What is a substitute statement and when can it be used in place of an inventor’s oath or declaration?

What is a substitute statement and when can it be used in a patent application?

What information must be included in a substitute statement?

What information must be included in a substitute statement for a deceased or incapacitated inventor?

What information must be included in a substitute statement for a deceased or incapacitated inventor?

What happens to a patent application with multiple inventors if one inventor dies?

What happens if an inventor refuses to sign the oath or declaration for a patent application?

What happens if an inventor refuses to sign the oath or declaration for a patent application?

What happens if an inventor refuses to sign the inventor’s oath or declaration?

What happens if an inventor refuses to sign the inventor’s oath or declaration?

What happens if an applicant submits both a substitute statement and an inventor’s oath?

What happens if an applicant submits both a substitute statement and an inventor’s oath?

What can be done if a joint inventor is unavailable or refuses to join in a patent application?

What are the requirements for oaths or declarations in continuing applications filed on or after September 16, 2012?

What are the requirements for a substitute statement in lieu of an oath or declaration?

What address should be provided for an inventor who doesn’t execute the oath or declaration?

Is proof required when filing a substitute statement?

How does the USPTO handle errors in the execution of an original assignment document?

How does the MPEP address the issue of unavailable joint inventors for applications filed on or after September 16, 2012?

How does an assignee file a substitute statement when an inventor is unavailable?

How do I correct an error in an oath or declaration?

How can an application be filed when a joint inventor refuses to sign or cannot be reached?

How can a legal representative file a patent application for a deceased inventor?

How can a legal representative file a patent application for a deceased inventor?

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

How can a legal representative file a patent application for a deceased inventor after September 16, 2012?

Can I correct an error in a recorded USPTO assignment document without submitting a new assignment?

Can a substitute statement be filed in a provisional application?

Can a substitute statement be filed in a provisional application?

Can a patent practitioner sign a substitute statement on behalf of a juristic entity?

Patent Procedure (36)

Who can sign a substitute statement for a deceased or incapacitated inventor?

Who can sign a substitute statement for a deceased or incapacitated inventor?