Dead Inventors, Inventors in Comas, and Minors – Who Can File a Patent Application? Episode 124

Standard Inventorship Situations

Most of the time, an inventor will come to me and want to patent her invention. The regular forms apply. And if you’re a company, you may have employees who invent something, and we have forms that the inventor has to sign as well as a company officer. That’s all normal stuff. But occasionally, some interesting things come up about inventorship and you have to know what to do.

Minors as Inventors

I’m going to talk about a few situations where inventorship can get a little tricky, starting with minors. Not the people digging for gold—I’m talking about people under 18.

Why is this an issue? One thing you have to do when filing a patent application is sign a Declaration of Inventorship. It’s just a one-page form where you declare that you are the inventor of what is being filed. But if you’re a parent, you probably know your kids usually aren’t allowed to sign things themselves and you have to do it for them. So what happens with this declaration?

There are two possibilities: either the parent signs on behalf of the minor, or the minor signs herself. And the answer is… drumroll please: the minor can sign herself. This is found in MPEP Section 409, where it states that a minor may execute an oath or declaration under 37 CFR 1.63 as long as the minor is competent to sign—meaning he or she understands the document being signed. A legal representative is not required to execute an oath or declaration on the minor’s behalf.

Power of Attorney for a Minor

But there’s another issue. If you’re the parent of a minor and want an attorney to file a patent on your child’s behalf, you have to give Power of Attorney to the attorney. The Power of Attorney must be signed by the parent on behalf of the child.

I tried to see if there’s a form for this on the USPTO website. The normal Power of Attorney form is PTO/AIA/82, but I couldn’t find any box that clearly applies to a parent signing for a minor. You write the applicant’s name and check one of four boxes: inventor, legal representative of a deceased or legally incapacitated inventor, assignee or obligated assignee, or a person with sufficient proprietary interest. None of those quite fit a minor situation.

So I think the best thing to do is make your own Power of Attorney. It can be short. It should say something like: “As a parent of minor child [insert name], the sole inventor of the subject matter that is claimed, I, [insert your name], hereby appoint the following practitioners to prosecute and transact all business in the Patent and Trademark Office under customer number [insert number].” Then sign and print your name.

If you’re a parent and want to talk to the patent office on your child’s behalf, you might just designate yourself. I’ve actually never seen this done and I’m not 100% sure what the patent office would do if an examiner wants to talk to the inventor and the parent wants to handle it instead. Maybe the examiner will talk to the parent without a form, or maybe they’ll need something written. If you want to give me Power of Attorney, I’ll need a signed Power of Attorney from the parent on behalf of the child. But the declaration can still be signed by the child herself. If the child really doesn’t understand the declaration, then the parent probably needs to sign a substitute statement, which I’ll talk about shortly.

Inventors Who Are Deceased

Now let’s talk about deceased inventors. Let’s say you came up with an invention, and then you die. Your spouse wants to patent the invention you came up with. She’s not the inventor, so she can’t sign the declaration herself.

The rules say that if the inventor is dead, legally incapacitated, refuses to execute the application, or cannot be found, the application may be made by someone else under rules found in 37 CFR. Specifically, under 37 CFR 1.42, the legal representative of a deceased inventor may execute the necessary declaration and apply for the patent.

Substitute Statements

There is a form called PTO/AIA/02. It’s called the Substitute Statement in Lieu of an Oath or Declaration for Utility or Design Patent Applications. This is used instead of the regular declaration form (PTO/AIA/01). In the substitute statement, you include the name of the invention, the application number, and the inventor’s name. You then check a box describing your relationship to the inventor: legal representative, assignee, person with proprietary interest, or joint inventor.

There are checkboxes for why the inventor isn’t signing: deceased, under legal incapacity (e.g., in a coma), cannot be found, or refuses to sign. You might ask, when would someone refuse to sign? Maybe the inventor left your company and is angry and won’t cooperate, but you still need their name on the application. That’s when this substitute statement comes in.

If there are joint inventors, you’ll also need to check a box saying whether an Application Data Sheet (ADS) has been filed naming all inventors. If not, you’ll have to submit Form PTO/AIA/11, which is a one-page form listing the names and addresses of all inventors.

I’ve been a patent attorney for over 12 years and I’ve never had to use this form. Maybe I’ve just been lucky. But it’s good to know it exists. If you’re a business, the key takeaway is to have all inventors sign the declaration of inventorship right away while they’re still happy and employed. You don’t want to be chasing down uncooperative inventors later.

Final Thoughts

There are remedies for missing declarations, but it’s better to avoid the hassle. Get your inventors to sign early. It’s just one page and can save you a lot of time and stress later on.

I’m Adam Diament, and until next time, keep on inventing.