In law, the details are everything. One slight variation in the facts changes the outcome. One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications.
Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. § 154(a)(1). Under normal circumstances, the inventors are considered the owners of a patent but can assign their ownership rights by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable ownership interest in the patent or application. 35 U.S.C. § 261.
Assignment from Deceased Inventor
When there are joint inventors and one or more is deceased, assigning ownership becomes a more complex process. The chain of ownership should be established from the deceased to his heirs and then from the heirs to the assignee. This can be accomplished, for example, by using court documents confirming the heirs of the deceased inventor and having those heirs assign their rights to the assignee. In addition, the remaining living inventors should also transfer their ownership rights to the assignee.
Oath/Declaration Requirement for Deceased Inventor
Under 35 U.S.C. § 117, legal representatives of deceased inventors may make application for a patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor. In addition, a person to whom a deceased inventor was under an obligation to assign the invention – such as an employer – may also make application for a patent. 35 U.S.C. § 118. To satisfy the oath or declaration requirement, a Substitute Statement (USPTO form AIA/02) must be executed by someone authorized to do so. 37 C.F.R. 1.64(a).
Once you have all of the above elements, fulfilling the assignment requirements is as easy as uploading to the USPTO and recording the three separate assignments – living inventors, documents establishing heirship, and the heir’s assignment. Similarly, fulfilling the oath or declaration requirements is as easy as submitting oaths/declarations from living inventors and a Substitute Statement executed on behalf of a deceased inventor.
