Substitute Statements

[Editor Note: This MPEP section is

only applicable

to patent

applications filed on or after September 16, 2012.]

37 CFR 1.64 Substitute statement in lieu of an oath or declaration.

(a) An applicant under

§ 1.43

,

1.45

or

1.46

may execute a substitute

statement in lieu of an oath or declaration under

§ 1.63

if the inventor is deceased, is under a legal incapacity, has refused to execute

the oath or declaration under

§ 1.63

, or cannot be found or

reached after diligent effort.

(b) A substitute statement under this section must:

(1) Comply with the requirements of

§

1.63(a)

, identifying the inventor or joint inventor

with respect to whom a substitute statement in lieu of an oath or

declaration is executed, and stating upon information and belief the facts

which such inventor is required to state;

(2) Identify the person executing the substitute

statement and the relationship of such person to the inventor or joint

inventor with respect to whom the substitute statement is executed, and

unless such information is supplied in an application data sheet in

accordance with

§ 1.76

, the residence

and mailing address of the person signing the substitute statement;

(3) Identify the circumstances permitting the

person to execute the substitute statement in lieu of an oath or declaration

under

§ 1.63

, namely whether the inventor is deceased, is

under a legal incapacity, cannot be found or reached after a diligent effort

was made, or has refused to execute the oath or declaration under

§

1.63

; and

(4) Unless the following information is supplied

in an application data sheet in accordance with

§

1.76

, also identify:

(i) Each inventor by his or her legal name;

and

(ii) The last known mailing address where the

inventor customarily receives mail, and last known residence, if an

inventor lives at a location which is different from where the

inventor customarily receives mail, for each inventor who is not

deceased or under a legal incapacity.

in an application data sheet in accordance with

§

1.76

, also identify:

(i) Each inventor by his or her legal name;

and

(ii) The last known mailing address where the

inventor customarily receives mail, and last known residence, if an

inventor lives at a location which is different from where the

inventor customarily receives mail, for each inventor who is not

deceased or under a legal incapacity.

(c) A person may not execute a substitute statement

provided for in this section for an application unless that person has reviewed

and understands the contents of the application, including the claims, and is

aware of the duty to disclose to the Office all information known to the person to

be material to patentability as defined in

§ 1.56

.

(d) Any reference to an inventor's oath or declaration

includes a substitute statement provided for in this section.

(e) A substitute statement under this section must

contain an acknowledgment that any willful false statement made in such statement

is punishable under

section 1001 of title 18

by

fine or imprisonment of not more than 5 years, or both.

(f) A nonsigning inventor or legal representative may

subsequently join in the application by submitting an oath or declaration under

§

1.63

. The submission of an oath or declaration by a

nonsigning inventor or legal representative in an application filed under

§

1.43

,

1.45

or

1.46

will not permit the nonsigning inventor or legal representative to revoke or grant

a power of attorney.

37 CFR

1.64

implements the substitute statement provisions of

35 U.S.C.

115(d)

and applies to applications filed on or after September 16,

2012.

37 CFR

1.64(a)

provides that an applicant under

37 CFR 1.43

,

1.45

or

1.46

may execute a substitute statement

in lieu of an oath or declaration under

37 CFR 1.63

if the inventor is

deceased, is under a legal incapacity, has refused to execute the oath or declaration under

37 CFR

1.63

, or cannot be found or reached after diligent effort

applies to applications filed on or after September 16,

2012.

37 CFR

1.64(a)

provides that an applicant under

37 CFR 1.43

,

1.45

or

1.46

may execute a substitute statement

in lieu of an oath or declaration under

37 CFR 1.63

if the inventor is

deceased, is under a legal incapacity, has refused to execute the oath or declaration under

37 CFR

1.63

, or cannot be found or reached after diligent effort. Thus, the

following applicant entities may sign a substitute statement on behalf of an inventor when

such a statement is permitted in a patent application:

(i) the inventor’s legal representative under

37 CFR

1.43

, where the inventor is deceased or legally

incapacitated;

(ii) the other joint inventors under

37 CFR

1.45

, where the inventor refuses to execute the oath or

declaration or cannot be found or reached after diligent effort;

(iii) an applicant under

37 CFR 1.46

who is the assignee or party to whom the inventor is under an obligation to assign,

where the inventor is deceased, legally incapacitated, refuses to execute the oath or

declaration, or cannot be found or reached after diligent effort; or

(iv) an applicant under

37 CFR 1.46

who is a party who otherwise shows a sufficient proprietary interest in the claimed

invention under

37 CFR 1.46(b)

, where the

inventor is deceased, legally incapacitated, refuses to sign the declaration or

cannot be reached or located after diligent effort.

35 U.S.C. 115(d)

provides that “the

applicant for patent” may provide a substitute statement under one of the permitted

circumstances.

37 CFR

1.64(a)

states “an applicant” but the use of “an” is to identify

alternative applicant types under

37 CFR 1.43

,

1.45

or

1.46

, and should not be interpreted to provide that only one or some

of the parties named as the applicant may execute the substitute statement. The following

examples are provided to assist applicant in execution of the substitute statement:

1

e permitted

circumstances.

37 CFR

1.64(a)

states “an applicant” but the use of “an” is to identify

alternative applicant types under

37 CFR 1.43

,

1.45

or

1.46

, and should not be interpreted to provide that only one or some

of the parties named as the applicant may execute the substitute statement. The following

examples are provided to assist applicant in execution of the substitute statement:

1. If the inventors are the applicant and one of the

inventors refuses to execute the oath or declaration or cannot be found or reached,

then under

37

CFR 1.45

all of the other joint inventors who are the applicant

(and who executed an oath or declaration) must execute the substitute statement on

behalf of the non-signing inventor. Joint inventors cannot execute a substitute

statement for a deceased or legally incapacitated joint inventor.

2. If the inventor is deceased or legally incapacitated,

then the substitute statement may be executed by a legal representative under

37 CFR

1.43

or by the applicant under

37 CFR

1.46

. Where the inventors are the applicant, only the legal

representative would execute the substitute statement for the deceased or legally

incapacitated inventor, and the Office would recognize the legal representative as an

applicant in place of the deceased or legally incapacitated inventor. Where the

deceased or legally incapacitated inventor assigned his or her rights to a party or

was under an obligation to do so, and the party is named as the applicant under

37 CFR

1.46

, then the

37 CFR 1.46

applicant may execute

the substitute statement without the need to seek a signature from the legal

representative.

3. An applicant under

37 CFR 1.46

can sign under all four permitted circumstances. Where there are multiple assignees

or obligated assignees who together are the applicant under

37 CFR

1.46

, all of the parties must execute the substitute statement on

behalf of the non-signing inventor. As stated previously,

35 U.S.C

ute statement without the need to seek a signature from the legal

representative.

3. An applicant under

37 CFR 1.46

can sign under all four permitted circumstances. Where there are multiple assignees

or obligated assignees who together are the applicant under

37 CFR

1.46

, all of the parties must execute the substitute statement on

behalf of the non-signing inventor. As stated previously,

35 U.S.C.

115(d)

specifies that “the applicant for patent” may execute

the substitute statement. For example, where there are two inventors, and the first

inventor assigned her rights to Company X and the second inventor was under an

obligation to assign his rights to Company Y, Company X and Company Y could be named

as the applicant for patent in the applicant information (

37 CFR

1.77(b)(7)

) section of the application data sheet (PTO/AIA/14

or equivalent) and should preferably be named on filing of the application. If the

second inventor refused to execute an oath or declaration, then a substitute

statement must be filed for the second inventor. The substitute statement must be

executed by an appropriate official of Company X and an appropriate official of

Company Y since together X and Y are “the applicant for patent.” Under this example,

neither Company X nor Company Y could be named as the sole applicant in the

application. All parties having any portion of the ownership in the patent must act

together as a composite entity in patent matters before the Office. See

MPEP §

301

.

A non-inventor applicant need not submit proof of the

permitted circumstance to file a substitute statement (e.g., inventor’s death certificate

to establish that a named inventor is deceased). However, where the permitted circumstance

identified in accordance with

37 CFR 1.64(b)(3)

is other than the

inventor’s death or legal incapacity, the inventor must have refused to execute the oath or

declaration, or applicant must have exercised diligent effort to find or reach the

inventor

a substitute statement (e.g., inventor’s death certificate

to establish that a named inventor is deceased). However, where the permitted circumstance

identified in accordance with

37 CFR 1.64(b)(3)

is other than the

inventor’s death or legal incapacity, the inventor must have refused to execute the oath or

declaration, or applicant must have exercised diligent effort to find or reach the

inventor. Though proof is not required to be submitted to the Office, proof of attempts to

secure the inventor’s signature should be kept in applicant’s file. There is no change to

what is considered a good faith attempt to contact an inventor and what constitutes a

refusal to sign.

A substitute statement under

37 CFR 1.64

must:

(1) comply with the requirements of

37 CFR 1.63(a)

, identifying the

inventor or joint inventor with respect to whom a substitute statement in lieu of an oath

or declaration is executed, and stating upon information and belief the facts which such

inventor is required to state; (2) identify the person executing the substitute statement

and the relationship of such person to the inventor or joint inventor with respect to whom

the substitute statement is executed, and unless such information is supplied in an

application data sheet in accordance with

37 CFR 1.76

, the residence and mailing

address of the person signing the substitute statement; and (3) identify the circumstances

permitting the person to execute the substitute statement, namely whether the inventor is

deceased, is under a legal incapacity, cannot be found or reached after a diligent effort

was made, or has refused to execute the oath or declaration under

37 CFR 1.63

. For

nonprovisional international design applications, the requirement in

37 CFR

1.64(b)(2)

to identify the residence and mailing address of the

person signing the substitute statement will be considered satisfied by the presentation of

such information in the international design application prior to international

registration. See

37 CFR 1.1021(d)(3)

e the oath or declaration under

37 CFR 1.63

. For

nonprovisional international design applications, the requirement in

37 CFR

1.64(b)(2)

to identify the residence and mailing address of the

person signing the substitute statement will be considered satisfied by the presentation of

such information in the international design application prior to international

registration. See

37 CFR 1.1021(d)(3)

.

Where an assignee executes a substitute statement, the

assignee must supply his/her residence and mailing address. If the assignee is a juristic

entity, the residence and mailing address of the juristic entity should be used.

Additionally, if the assignee is a juristic entity, the applicant name and the title of the

person executing the substitute statement must be included. For a juristic entity, the

substitute statement may be signed by (A) a person in the organization having apparent

authority to sign on behalf of the organization (e.g., an officer), or (B) any person if

the substitute statement sets forth that the person signing is authorized (or empowered) to

act on behalf of the juristic entity (e.g., the general counsel). See

MPEP §§ 324

and

325

. Note: a power of attorney to a patent practitioner to

prosecute a patent application executed by the juristic entity does not make that

practitioner an official of the juristic entity or empower the practitioner to sign the

substitute statement.

In addition, unless such information is supplied in an

application data sheet in accordance with

37 CFR 1.76

, or in an international

design application prior to registration (see

37 CFR 1.1021(d)(3)

), the substitute

statement must also identify: (1) each inventor by his or her legal name; and (2) the last

known mailing address where the inventor customarily receives mail, and last known

residence, if an inventor lives at a location which is different from where the inventor

customarily receives mail, for each inventor who is not deceased or under a legal

incapacity

n (see

37 CFR 1.1021(d)(3)

), the substitute

statement must also identify: (1) each inventor by his or her legal name; and (2) the last

known mailing address where the inventor customarily receives mail, and last known

residence, if an inventor lives at a location which is different from where the inventor

customarily receives mail, for each inventor who is not deceased or under a legal

incapacity.

A non-inventor applicant is not required to state in the

substitute statement that he/she has reviewed and understands the contents of the

application, including the claims. Nevertheless, it should be noted that a person may not

execute a substitute statement under

37 CFR 1.64

unless that person has

reviewed and understands the contents of the application, including the claims, and is

aware of the duty to disclose to the Office all information known to the person to be

material to patentability as defined in

37 CFR 1.56

. See

37 CFR

1.64(c)

. Any reference to an inventor’s oath or declaration also

includes a substitute statement as provided for in

37 CFR 1.64

.

A substitute statement under

37 CFR 1.64

must

contain an acknowledgement that any willful false statement made in such statement is

punishable under

18

U.S.C. 1001

by fine or imprisonment of not more than five (5) years,

or both.

A nonsigning inventor may subsequently join in the

application by submitting an oath or declaration under

37 CFR 1.63

.

[top]