604 Substitute Statements [R-10.2019]

[Editor Note: This MPEP section is only applicable to patent applications filed on or after September 16, 2012.]

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. 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. 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. 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. 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).

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.

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.

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