What If One of the Inventors Won’t Sign the Patent Application?

The oath or declaration required to be submitted with a patent application must identify each inventor by full name (37 CFR §1.63). Anyone who contributes to the conception of the claimed invention qualifies as an inventor and must be listed (MPEP §2137.01(II)). Ordinarily, each listed inventor must sign the oath or declaration.

However, sometimes it is difficult to locate one or more of the inventors, and sometimes one or more of the inventors refuses to sign. When this happens, it is often still possible to proceed with an application.

None of the Inventors are Available

If none of the inventors can be found or are willing to sign, an application can still be filed by someone who has been assigned the patent rights or to whom the inventor has agreed to assign the patent rights or who otherwise has a proprietary interest in the invention (35 U.S.C. §118).

Typically, this would be an employer, to whom the inventor has either already signed an assignment giving it the patent rights to the invention in question or to whom the inventor has agreed, often in an employment agreement, to assign the invention. A standard employment agreement in technology industries requires assignment of all inventions developed during the course of employment to the employer.

In this case, the assignee or otherwise interested party must (MPEP 409.03(b)):

1. Execute the oath or declaration on behalf of the inventor(s);
2. State the relationship between it and the inventor(s);
3. Submit proof that the inventor(s) cannot be found or reached after a diligent effort or refuse to execute the application papers;
4. Submit the last known address of the inventor(s);
5. Show that it has a proprietary interest in the invention (MPEP §409.03(f));
6. Show that the filing of the application is necessary to preserve the rights of the parties or to prevent irreparable damage; and
7. Pay the petition fee under §1.17(g).

Most of these elements can usually be satisfied by statements or affidavits on the part of the assignee or other interested party, along with relevant assignment documents.

One or More Inventors Are Available

When at least one inventor is available and willing to sign the oath or declaration, the available inventor(s) can sign and submit the application on behalf of all the inventors. In this case, the application must include proof that the nonsigning inventor(s) cannot be reached or refuse to execute the application papers and the last known address of the nonsigning joint inventor(s) (MPEP §409.03(a)). See MPEP § 409.03(d).

Rights of Nonsigning Inventors

These procedures do not terminate the rights of nonsigning inventors. The nonsigning inventors retain the same rights they would have had if they had signed. A nonsigning inventor who becomes aware of the application and wishes to participate may join the application by submitting a signed oath or declaration. A nonsigning inventor cannot revoke or grant a power of attorney without agreement of the signing applicant. MPEP §409.03(i).

Note that where all the inventors have assigned the rights to their invention, it is the assignee who has the patent rights and the inventors, signed or unsigned, have few rights beyond having their names listed on the patent as inventors.