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.
{ 7 comments… read them below or add one }
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)
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.
You should also be familiar with the provisions found in MPEP 409.01, 409.01(e), and 409.01(f)
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..
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).
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
I forget the third one.