AIA Substitute Statement

Most of the time, inventors are very cooperative with the patent process. A patent application is one more star they can add to their CV. Further, many times companies have awards for each patent application filed. However, from time to time inventors are not cooperative with the process. In my experience, this usually occurs when the inventor has left the company either voluntarily or involuntarily. Despite diligent efforts to contact the inventor in these situations, they ignore us completely.

Prior to the America Invents Act (AIA), in such situations, the assignee (or the other joint inventors) were required to submit a petition including proof of the pertinent facts to the office of petitions and await the decision (see 37 CFR 1.47, 35 USC 118 pre-AIA). If the declaration was not filed at the time of filing, it would have to be filed within a certain date of a notice from the office along with the necessary extension fees.
The AIA eliminates much of the burden from these types of situations. First, the declaration now does not have to be submitted no later than the date on which the issue fee is paid (see 35 USC 115(f)). Secondly, although the requirement to make diligent effort still remains, a substitute statement under 37 CFR 1.64 can be filed in lieu of the oath or declaration (Form PTO/AIA/02). The substitute statement must (1) identify the inventor(s) for which the substitute statement is being submitted; (2) identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor, and the person’s address if it is not supplied in the application data sheet; (3) the circumstances permitting the person to execute the substitute statement (i.e., cannot be reached after diligent effort); and (4) if not supplied in the ADS, the legal name of the inventor or joint inventor and, for inventor not deceased, the last known mailing address.

For example, if the inventor has already executed an assignment to a corporation, a person such as an officer of the corporation with authority can execute the substitute statement. No proof the pertinent facts have to be submitted (although a record of the facts should be kept in the file). Most importantly, we no longer have to wait for a decision from the office of petitions.