Q) Death of inventor before application is filed (MPEP 400)

by patentbar on August 1, 2008 · 43 comments

in Exam Questions

Test takers report a question that dealt with an inventor having possession of an invention prior to death – and whether a legal rep. can file application. The fact pattern looked something like:
• A invented a fishing device but passed away before application is filed;
• The heir is 13 years old and legally incapacitated;
Test takers report that the likely correct answer is Barbara, the attorney in living will.

37 CFR 1.42 When the inventor is dead – In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

A second variation of the question is as follows:
• Dead inventor appointed best fried as executor/administrator of will;
• Son thinks that he will be 1 of the heirs of the estate;
• Son wants to go ahead and file for patent application using Dad’s invention;
• The estate is over the minimum sum required by state law for the appointment of administrator.

In this case, the executor/legal representative has to be the one to file application (sign oath, etc.). Heirs can file only if there is no will, or no executor appointed in will and the estate was under the sum required by the state for appointing an executor.

MPEP 409.01(a) Prosecution by Administrator or Executor –
One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42.
Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to 37 CFR 1.63 and 1.64.

Another reported variation as of 8/10/2007: Death of inventor AFTER application is filed, and AFTER assignment of all rights, BEFORE allowance

MPEP 409.01(e) If Applicant of Assigned Application Dies – When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (MPEP § 402.07).

Variation as of 3/18/2008: Inventor dies after filing application and assigning partial interest to patent attorney. The answer is likely that prosecution may continue without any filing by the inventor’s estate.

MPEP 409.01 Death of Inventor – Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated (but see MPEP § 409.01(f)). See also 37 CFR 1.422.

{ 43 comments… read them below or add one }

1 patentbarNo Gravatar September 4, 2008 at 3:59 pm

Questions involving the death of an inventor are common. For example, a question involves a likely heir who wants to file a patent application of a deceased inventor and the inventor had a will, executor, and the will was over the amount requiring an executor by state law. MPEP 409.01(a)

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2 patentbarNo Gravatar September 4, 2008 at 3:59 pm

Another question involves an inventor that has assigned a part interest to his or her invention to his or her practitioner, and the inventor dies. See MPEP 409.01.

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3 patentbarNo Gravatar September 4, 2008 at 3:59 pm

You should also be familiar with the provisions found in MPEP 409.01, 409.01(e), and 409.01(f)

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4 samboNo Gravatar September 12, 2009 at 10:44 am

Got a question yesterday involving two inventors who died during patent prosectution. Notice of allowance was sent. They had a power of attorney designated in question. An executrix of the estate named MARY is mentioned. Someone named Jo is named on the will and wants to continue prosecution. What happens next?

I read in the MPEP that once one of the joint inventors dies, the power of attorney ends. Then a sentence about…unless the heirs intervene..

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5 samboNo Gravatar September 12, 2009 at 10:45 am

Actually, the I may be wrong about the notice of allowance being sent. However, the NOA was mentioned. Also, please refer to

MPEP 409.01(e) If Applicant of Assigned Application Dies – When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (MPEP § 402.07).

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6 SNo Gravatar June 5, 2010 at 6:44 am

I got three death of the inventor questions.

1) Death of the inventor after the notice of allowance.
1303.03-The Notice of Allowance will not be withheld due to death of the inventor if the executor or administrator has not intervened. {verbatim}

2) somebody(Joe) named in the will finds the patentable material in the attic. Mary is the named executrix of the estate. Mary should sign the papers. See 409.02

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7 SNo Gravatar June 5, 2010 at 6:45 am

I forget the third one.

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8 AnneNo Gravatar January 19, 2011 at 10:12 pm

I got those two questions of S above.

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9 VeNo Gravatar January 27, 2011 at 7:40 pm

Got variant 3 today. I chose the answer where the attorney may continue prosecution because death of inventor doesn’t revoke POA.

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10 patenttipsNo Gravatar March 17, 2011 at 4:50 pm

This is NOT correct. Death of inventor TERMINATES power of attorney.

Executor of estate CAN continue prosecution UNLESS assignee intervenes.

MPEP 409.01(e)

409.01(e) If Applicant of Assigned Application Dies

When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes ( MPEP § 402.07).

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11 patenttipsNo Gravatar March 17, 2011 at 4:52 pm

This is NOT correct. Death of inventor TERMINATES power of attorney.

Executor of estate CAN continue prosecution UNLESS assignee intervenes.

MPEP 409.01(e)

409.01(e) If Applicant of Assigned Application Dies

When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes ( MPEP § 402.07).

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12 patenttipsNo Gravatar March 23, 2011 at 12:17 pm

also saw question: inventor appoints atty partial assignee, inventor dies.

partial assignee may continue prosecution

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13 OverworkkedNo Gravatar April 28, 2011 at 2:50 pm

VARIANT on 4/27/2011 E8R8:

Applicant gives full power of attorney to patent atty. Files and assigns application in full to Corp. Z. Applicant dies. What now?

A. Executor of estate may file papers and continue until Corp. Z revokes (My Answer)
B. Corp. Z may revoke (Which is also true, but A is a MPEP quasi-quote)
C. something
D. something
E. something else

The delineation between A & B was REALLY fine. Both were equally valid in my view, but A was the MPEP extract, so I went with it.

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14 Sarah W.No Gravatar May 7, 2011 at 8:57 pm

Corp Z has no need to revoke because POA terminates upon the inventor’s death. A is correct. B is wrong.

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15 PBNo Gravatar June 30, 2011 at 10:17 am

Does assignment also terminate upon the death of the inventor?

16 SarahNo Gravatar May 18, 2011 at 4:11 pm

Got a dead inventor question today 5/18/11.

Involved power of attorney. Question was inventor died, but had given part interest to his attorney to pay practitioner fees. Correct answer is attorney can continue to prosecute and power of attorney not revoked.

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17 maggieNo Gravatar November 15, 2011 at 4:33 pm

Maybe same as Ben reported from VA:

(Q) Alvin and Bert – Alvin dies. The key here is the application was made by a registered practitioner. Therefore, power of attorney does not leave Bert and there’s no problem. Nothing needs to be done.

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18 patentgeekchickNo Gravatar September 22, 2011 at 8:38 pm

Got overworked’s variant 9.22.11

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19 maggieNo Gravatar November 15, 2011 at 4:34 pm

Another Q reported from Ben from VA:

(Q) Both inventors die, after notice of allowance, but before it reaches the registered practitioner.
Answer – Board cannot withdraw the application unless the heirs intervene. (The wording was much more confusing than that).

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20 lilyNo Gravatar December 11, 2011 at 4:14 pm

Maggie,
who is Ben and where can i see more of his questions? thanks!

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21 AlfredoNo Gravatar January 24, 2012 at 12:50 pm

I got the variant where patent attorney was assigned a partial interest. Question was essentially can he keep prosecuting the application or does he need new power of attorney from heirs/representatives etc.
1/23/12

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22 KFNo Gravatar March 18, 2012 at 11:59 pm

Alfredo-so what is the answer?

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23 KFNo Gravatar March 19, 2012 at 12:00 am

I think yes, because he had a partial interest assigned to him? Can anyone confirm? It’s much easier to understand the distilled answers at the bottom then middle through the top!

24 TheGhostOfBilskiNo Gravatar April 6, 2012 at 3:24 pm

confirmed, patent attorney can continue prosecuting b/c had part interest

25 KillianRedNo Gravatar March 17, 2012 at 5:52 pm

Got this on 3/17/12 (1st question)

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26 ASNo Gravatar March 28, 2012 at 5:37 pm

Under what circumstances can a person who died 17 years before a patent application is filed be listed as a co-inventor?

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27 MirandaNo Gravatar March 28, 2012 at 7:47 pm

I would think that the answer would be the same as if he died the day before the application is filed- that the legal representative would have to make the necessary oaths under 37 CFR 1.42.
someone correct me if i’m wrong.

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28 TheGhostOfBilskiNo Gravatar April 6, 2012 at 3:35 pm

I agree and am not aware of any specific time limit that would matter. In a scenario where a long period of time has passed since death of the inventor, the administrator or executor may have long since been discharged. In this case, if the administrator/executor is the relevant entity to make the necessary oaths, “it is necessary for the legal admin or executor to take out new letters of administration in order that he or she may file a new application for an invention of the deceased inventor.” MPEP 409.01(c).

However, if a legal rep is not available (after searching with diligent effort), the co-inventor could sign, and include the last known address of the deceased inventor’s legal rep. MPEP 409.03(c).

29 SolNo Gravatar April 6, 2012 at 9:34 pm

what if the dead is the sole inventor, no legal representative, can someone with sufficient proprietary interest apply for the patent? I guess yes, but cannot find support.

30 vertyNo Gravatar April 6, 2012 at 9:50 pm

1.47(b) would be the rule for that.

31 SolNo Gravatar April 7, 2012 at 12:03 am

Strictly on the language, 1.47(b) is not the basis because 1.47 is about “refuse to execute an application for patent, or cannot be found or reached after diligent effort”. Well, I do base my guess on the spirit of 1.47(b).

Rules do differentiate “death” from “cannot be found or reached after diligent effort”; otherwise, there would be no a separate 1.42.

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32 MirandaNo Gravatar April 7, 2012 at 1:23 am

“37 CFR 1.47 should not be considered an alternative to 37 CFR 1.42 or 35 U.S.C. 117 since the language ‘cannot be found or reached after diligent effort’ has no reasonable application to a deceased inventor… However, 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application. In such cases, the last known address of the legal representative must be given (see MPEP § 409.03(e)).”

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33 vertyNo Gravatar April 7, 2012 at 12:36 pm

Disregard what I said. I am wrong.

34 RTNo Gravatar May 11, 2012 at 12:39 pm

Got it 5-10-12.

Picked Barbara.

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35 jkpatentlawNo Gravatar June 12, 2012 at 3:14 pm

who is Barbara?

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36 zanNo Gravatar June 12, 2012 at 3:27 pm

jkpatentlaw: see question 1 above. Barbara is the attorney in living will.

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37 passedatlastNo Gravatar June 19, 2012 at 5:47 pm

Got at least 2 questions about dead people.

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38 fluidNo Gravatar September 23, 2012 at 8:58 am

I had it 9/22/2012.

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39 MojoNo Gravatar September 23, 2012 at 6:01 pm

Had it on 9/23

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40 RandomNo Gravatar October 15, 2012 at 8:41 pm

Got this one today. It was the 3/18 variant.

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41 Lee ErvinNo Gravatar November 13, 2012 at 9:20 pm

Question….
Father dies, Mother dies, children young. Children found out later Father had patent issued in 1940. No will. Patent on file. Is their any recourse for family to be a part of this patent is it was used, sold, stolen or whatever?

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42 OrdinaryskillNo Gravatar November 13, 2012 at 10:00 pm

The subject patent expired in 1957, 17 years from date of grant in 1940, so no property right left to contest in probate.

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43 VinoNo Gravatar November 21, 2013 at 10:49 pm

Got 8/10 variant on 11/14. inventor dies after assignment and before allowance. i chose the answer noted above.

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