What to Do When Inventor Is Missing or Refusing to Sign
It might be unusual, but it still happens from time to time. You need signatures from an inventor for a patent application, but the inventor is missing, dead or unwilling to sign the documents. Let’s explore how a company can move forward with a US patent application when an inventor is missing.
Need to move forward without an inventor? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get past a missing inventor.
Two Critical Documents Required: Substitute Statement + Ownership
If a patent application is owned by a company or organization, the following two requirements must be met when dealing with a missing inventor:
- Declaration or a substitute; and
- Patent assignment or a substitute.
Both requirements must be satisfied. As discussed below, a substitute statement can satisfy only the declaration requirement. Ownership must also be sufficiently established with documents that show the company or organization is the patent owner.
How a Substitute Statement Works
A company or organization that wants to proceed with a US patent application despite the inability or refusal of an inventor to sign can file a substitute statement in lieu of the inventor declaration.
Before submitting the substitute statement, the company must make a diligent effort to contact the inventor. Unless the inventor is deceased or under a legal incapacity, the company will declare in the substitute statement that the inventor could not be found or reached after a diligent effort was made, or that the inventor has refused to execute the declaration.
Why a Substitute Statement Is Insufficient to Establish Patent Ownership
Remember that the second requirement of patent ownership must be sufficiently established. A substitute statement cannot satisfy this ownership requirement.
Normally, a patent assignment would be signed by all coinventors, and the executed assignment would then be recorded with the USPTO. When you cannot supply a patent assignment signed by a missing inventor, you must submit documentary evidence of ownership.
How to Establish Patent Ownership Without An Assignment
Let’s assume you have an inventor who refuses to sign a patent assignment. Here are some options for submitting documentary evidence of patent ownership:
- Agreement to assign (e.g., employment agreement) accompanied by a statement of facts by someone with firsthand knowledge of any specified conditions being met; or
- Legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the applicant.
Suppose you have a document signed by the missing inventor, but it’s questionable as to whether it qualifies as an employment agreement specifying ownership of patent rights. In that case, you might need a legal memorandum drafted by a competent attorney familiar with IP ownership laws between a company and the position of the missing inventor.
Plan B: What if the Missing Inventor Is Not a Coinventor?
Remember that inventorship is ultimately defined by the claims. Suppose you have an inventor who is missing, out of touch or unwilling to sign documents. One option might be to revise the claims to carve out the contributions by the missing inventor.
File a Preliminary Amendment to Amend Claims
This option works only if you have at least one other coinventor who is able to sign documents. In other words, this option will not work if the one missing is the sole inventor.
Where you have multiple inventors, can the claims be amended to capture only those contributions to the conception by the remaining available coinventors?
Need Help Dealing With a Missing Inventor?
Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you move forward with your patent application.
