When filing a patent with the USPTO (United States Patent and Trademark Office), an inventor of a process, machine, manufacture, or composition of matter, or of any new and useful improvement thereof, must file a document known as an Inventor’s Declaration, in which the inventor certifies that he is in fact the original or an original joint inventor of the claimed invention in the application.

What happens if one inventor refuses to sign this document?

On September 16th 2012, the AIA (America Invents Act) was enacted. The Act gives the employer of an inventor-employee, or a legal representative of a deceased inventor, a way to execute the Declaration on behalf of the inventor. This can be used in several different circumstances, such as if the inventor has a falling out with the company he works for, or in the event he is deceased or cannot be found.

The patent is still issued in the name of the inventor. However, this mechanism avoids the seemingly endless legal headaches that used to occur before the enactment of AIA. These were costly and time-consuming for all the involved parties.

The America Invents Act also allows for simple and easy filing of the executed Declaration because the time extensions necessary in the past for timely responding to Notice to File Missing Parts, i.e., for filing the executed documents, are no longer needed. The only fees involved now are the late filing fees for submitting such documents.

These are definitely huge steps forward. Ultimately, by filing within the new system, it has become possible to get past the burdensome and sometimes impossible procedures that used to be required for having a patent examined when the original inventor(s) was unwilling or unable to sign for himself.

What if your company’s patent application has a filing date prior to the Act’s enactment on September 16, 2012, and at least one of the inventors refuses to sign, or cannot be located or is deceased?

The way to bypass this stand-off is to file a continuation application and give it a filing date of today.

The America Invents Act has several controversial components, but the new provisions involving the execution of the Oath or Declaration will be hugely beneficial for inventors and employers alike.

Silvia Salvadori, PhD.
www.salvadorilaw.com
www.salvadorilaw.com/blog
silvia@salvadorilaw.com
(212) 897-1938