Patent Application Declarations For Unavailable Or Uncooperative Inventors

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications. In other cases, inventors may have a falling out with employers or refuse to cooperate in signing declarations. If patent applicants cannot acquire declarations from these unavailable or uncooperative inventors, significant difficulties may arise in patent prosecution, such as delayed issuance or application abandonment. Fortunately, the USPTO provides for applicant control of patent prosecution by filing a substitute statement in the event a declaration cannot be obtained. This article summarizes the requirements of substitute statements and identifies pitfalls to avoid in preparing and filing substitute statements.