What happens to a patent application when an inventor dies before filing?
When an inventor dies before filing a patent application, the legal representative (executor, administrator, etc.) of the deceased inventor can make the necessary oath or declaration and apply for the patent. This is specified in 37 CFR 1.42 (pre-AIA), which states: “In case of the death of the inventor, the legal representative (executor, administrator, etc.)…
Read MoreHow does the death of an inventor affect power of attorney in a patent application?
The death of an inventor can have significant implications for power of attorney in a patent application. According to MPEP 409.01(a): 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…
Read MoreWhat information must be included in the declaration when an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b)?
When an application is executed by someone other than the inventor under pre-AIA 37 CFR 1.47(b), the declaration must include specific information about the non-signing inventor. According to the MPEP, the declaration must state: The full name of the non-signing inventor The residence of the non-signing inventor The post office address of the non-signing inventor…
Read MoreHow can an applicant demonstrate sufficient proprietary interest without an assignment or agreement to assign?
If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by: Submitting a legal memorandum Providing an affidavit or declaration of firsthand knowledge Including copies of relevant statutes or court decisions (if non-U.S.) MPEP 409.03(f) states: “A proprietary interest obtained other…
Read MoreHow does an applicant demonstrate a proprietary interest under pre-AIA 37 CFR 1.47(b)?
To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this: Show that the invention has been assigned to the applicant Provide evidence that the inventor has agreed in writing to assign the invention to…
Read MoreHow is refusal to join an application determined under pre-AIA 37 CFR 1.47?
Determining refusal to join an application under pre-AIA 37 CFR 1.47 involves several considerations: The inventor must be presented with the application papers. The inventor must understand what they are being asked to sign. The inventor must expressly refuse to accept the application papers. The MPEP states: ‘A refusal by an inventor to sign an…
Read MoreWhat is the difference between an assignment and an agreement to assign in the context of MPEP 409.03(f)?
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are: Assignment: A completed transfer of rights in the invention. Agreement to Assign: A promise to transfer rights in the future, often conditional. For an assignment, MPEP 409.03(f)…
Read MoreWhat is the difference between pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 in relation to deceased inventors?
Pre-AIA 37 CFR 1.42 and pre-AIA 37 CFR 1.47 serve different purposes in relation to deceased inventors: Pre-AIA 37 CFR 1.42: This regulation specifically addresses the situation of a deceased inventor. It allows the legal representative (executor or administrator of the estate) to make an application on behalf of the deceased inventor. Pre-AIA 37 CFR…
Read MoreWhat is considered ‘diligent effort’ when trying to contact an inventor for joint invention?
What is considered ‘diligent effort’ when trying to contact an inventor for joint invention? When attempting to contact a joint inventor for patent application purposes, ‘diligent effort’ typically involves: Multiple attempts to reach the inventor through various communication methods (e.g., phone, email, postal mail) Reasonable time intervals between attempts Documenting all contact attempts and responses…
Read MoreWhat documentation is needed to show an agreement to assign in a pre-AIA 37 CFR 1.47(b) application?
To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide: A copy of the written agreement to assign the invention If the agreement is conditional, a statement of facts showing the conditions have been met MPEP 409.03(f) states: “When an inventor has agreed in writing to assign an invention…
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