409.01(b) Deceased or Legally Incapacitated Inventor- Application Filed Before September 16, 2012 [R-01.2019]
[Editor Note: See MPEP § 409.01(a) for information pertaining to a deceased or legally incapacitated inventor in an application filed on or after September 16, 2012.]
35 U.S.C. 117 Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
37 CFR 1.42 (pre-AIA) When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.
37 CFR 1.43 (pre-AIA) When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.
I. TERMINATION OF POWER OF ATTORNEY – DECEASED INVENTOR
Unless a power of attorney is coupled with an interest (i.e., a patent practitioner is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor in an application filed before September 16, 2012. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. See also pre-AIA 37 CFR 1.422.
II. PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR
When an inventor becomes legally incapacitated prior to the filing of an application and prior to executing the oath or declaration required by pre-AIA 37 CFR 1.63 and no legal representative has been appointed, one must be appointed by a court of competent jurisdiction for the purpose of execution of the oath or declaration of the application.
One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with pre-AIA 37 CFR 1.42.
Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64.
III. PROOF OF AUTHORITY OF ADMINISTRATOR OR EXECUTOR
Proof of authority of the legal representative of a deceased or incapacitated inventor is not required. Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.
IV. AFTER ADMINISTRATOR OR EXECUTOR HAS BEEN DISCHARGED
When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.
V. EXCEPTION IN SOME FOREIGN COUNTRIES
The terms “Executor” and “Administrator” do not have exact counterparts in all foreign countries, and therefore, those terms must be construed to fit the circumstances of the case. Hence, the person or persons having authority corresponding to that of executor or administrator are permitted to make an application.
VI. IF INVENTOR OF ASSIGNED APPLICATION DIES
When an inventor who has prosecuted an application after assignment, dies, the administrator of the deceased inventor’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (see MPEP § 402.07).
VII. INTERVENTION OF EXECUTOR NOT COMPULSORY
When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.
This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inventor. See MPEP § 409.01.
When an application is being prosecuted by joint inventors without a joint inventor or patent practitioner having been granted a power of attorney, and a joint inventor dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with pre-AIA 37 CFR 1.63 and 1.64 (e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citizenship and post office address). Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.