409.01(a) Deceased or Legally Incapacitated Inventor – Application Filed on or After September 16, 2012 [R-01.2019]

409.01(a) Deceased or Legally Incapacitated Inventor – Application Filed on or After September 16, 2012 [R-01.2019]

[Editor Note: See MPEP § 409.01(b) for information pertaining to a deceased or legally incapacitated inventor in an application filed before 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 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an 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. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

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 an inventor who is an applicant party terminates the power of attorney given by the deceased inventor in an application filed on or after September 16, 2012. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor-applicant or all powers of attorney in the application have been terminated.

II. PROSECUTION BY ASSIGNEE, OBLIGATED ASSIGNEE OR SUFFICIENT PROPRIETARY INTEREST PARTY

Under 37 CFR 1.46, a person to whom the inventor assigned (“assignee”), to whom the inventor was under an obligation to assign (“obligated assignee”), or a person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of the deceased or legally incapacitated inventor. See 35 U.S.C. 118. If the 37 CFR 1.46 applicant is the assignee or obligated assignee of the deceased or legally incapacitated inventor’s interest, or a party who showed/can show a sufficient proprietary interest in the claimed invention, there is no need to involve the legal representative as the 37 CFR 1.46 applicant can execute the substitute statement. See MPEP § 409.05 for more information. See 37 CFR 1.64 and MPEP § 604 concerning the execution of a substitute statement by a 37 CFR 1.46 applicant in lieu of an oath or declaration.

III. PROSECUTION BY LEGAL REPRESENTATIVE, ADMINISTRATOR OR EXECUTOR

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an 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. See 35 U.S.C. 117. 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.

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.

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.

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.

IV. PROSECUTION BY SURVIVING JOINT INVENTOR-APPLICANTS

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. Upon submission of such proof, only the signatures of the living joint inventor-applicants 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 a substitute statement in compliance with 37 CFR 1.64. 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, until the legal representative and living joint inventors appoint a representative.