Section 409.03(b) No Inventor Available

[Editor Note: This MPEP section is not applicable to applications filed on or after September 16, 2012.]

Filing under pre-AIA 37 CFR 1.47(b) and pre-AIA 35 U.S.C. 118 is permitted only when no inventor is available to make application. These provisions allow a “person” with a demonstrated proprietary interest to make application “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration. The word “person” has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation. Where pre-AIA 37 CFR 1.47(a) is available, application cannot be made underpre-AIA 37 CFR 1.47(b).

In addition to other requirements of law (pre-AIA 35 U.S.C. 111(a) and 115), an application deposited pursuant to pre-AIA 37 CFR 1.47(b) must meet the following requirements:

  • (A) The pre-AIA 37 CFR 1.47(b) applicant must make the oath required by pre-AIA 37 CFR 1.63 and 1.64 or 1.175. Where a corporation is the pre-AIA 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Treasurer, or Chief Executive Officer) thereof should normally sign the necessary oath or declaration. A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf. Where an oath or declaration is signed by a registered attorney or agent on behalf of a corporation, either proof of the attorney’s or agent’s authority in the form of a statement signed by an appropriate corporate officer must be submitted, or the attorney or agent may simply state that he or she is authorized to sign on behalf of the corporation. Where the oath or declaration is being signed on behalf of an assignee, see MPEP § 324. An inventor may not authorize another individual to act as his or her agent to sign the application oath or declaration on his or her behalf. Staegerv. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm’r Pat. 1973). Where an application is executed by one other than the inventor, the declaration required bypre-AIA 37 CFR 1.63 must state the full name, residence, post office address, and citizenship of the nonsigning inventor. Also, the title or position of the person signing must be stated if signing on behalf of a corporation under pre-AIA 37 CFR 1.47(b).
  • (B) The pre-AIA 37 CFR 1.47(b) applicant must state his or her relationship to the inventor as required by pre-AIA 37 CFR 1.64.
  • (C) The application must be accompanied by proof that the inventor (1) cannot be found or reached after a diligent effort or (2) refuses to execute the application papers. See MPEP § 409.03(d).
  • (D) The last known address of the inventor must be stated. See MPEP § 409.03(e).
  • (E) The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application. See MPEP § 409.03(f).
  • (F) The pre-AIA 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to preserve the rights of the parties or (2) to prevent irreparable damage. See MPEP § 409.03(g).