Protecting Your Right to File a Patent during the Pandemic
October 2nd, 2020
A patent declaration is a short statement that each inventor listed on a patent application must sign, representing that she or he is the original inventor of the invention listed in the application. This is a statement that the so-called inventor didn’t actually copy or steal the invention from someone else.
The inventor must also state that she or he has reviewed and understands the contents of the patent application. The inventor must also agree to disclose any relevant information to the Patent Office.
The standard form for a patent declaration looks like this. This declaration is part of the overall patent application, which includes the summary, background description, claims, and usually drawings.
Submitting a patent application without such a declaration can lead to an application being denied, delayed, or abandoned.
But what do you do if you own the rights to an invention, but the actual inventor isn’t available to sign the declaration?
This can happen for a number of reasons.
About 80-90% of patented inventions were created by employees of large companies, rather than by individual inventors tinkering in their own workshops. Usually, the rights to such inventions are assigned to employers via employment contracts.
However, if an inventor is fired or otherwise leaves a company on less-than-friendly terms, the inventor may not want to provide a declaration when it comes time to filing a patent application.
Especially these days, due to the pandemic, companies have an increased risk that an inventor is unavailable.
Applicants can file a substitute statement where an inventor is dead, is legally incapacitated (for example, seriously ill), can’t be found or reached after diligent effort, or refuses to sign a declaration.
The person signing the substitute statement must:
- identify the person executing the substitute statement and the person’s relationship to the inventor;
- state why a substitute statement is required;
- acknowledge the penalties clause under 37 C.F.R. 64(e);
- identify the actual inventor;
- review and understand the contents of the application (including the claims); and
- be aware of the duty to disclose all material information to the Patent Office.
When filing a substitute statement, it’s important to document all the efforts that have been made to contact the inventor and obtain a regular declaration. Such documentation could include copies of emails and text messages, email delivery receipts, copies of delivery receipts from mail or courier deliveries, and online records showing deliveries of communications.
Since patent rights can be lost due to the passage of time, or if another inventor files first, it’s important to act quickly to either obtain a declaration or file a substitute statement.