A declaration is a required part of a patent application. It states a number of things about the inventor and the invention. Before the American Invents Act, a declaration stated that the inventor had authorized the application, that he/she was the original inventor, that he understood not make false statements, that he understood the duty to disclose information material to patentability, and that he had read and reviewed the application filed. After the AIA, only the first three of these have been mandated, however, there are several reasons for still including the statements despite the lessened requirement.
Generally, an application is initially filed with the declarations. However, this is not always possible. In some cases, some inventors may not be willing to sign – perhaps they were a contracted engineer who designed an element and never got paid, and now doesn’t want to help with the patent application. Or they have moved away and are no longer in contact. Or they may have even died. Whatever the reason, the inventor may not be able to sign the declaration. What can be done?
When the inventor is unavailable or refuses to sign, you can sign on their behalf with a Substitute Statement. There are a whole host of rules qualifying this and specifying what has to be done, however. This article won’t describe them in detail, because only a qualified attorney should submit a document like that, but I will describe some basic guidelines. The unavailability threshold is quite high. If the inventor is out of town or on vacation in a foreign country, the standard is not met. And an inventor in the hospital doesn’t count, even if he is in a coma. Facts have to be presented when you sign for the other inventor, and the Patent Office will consider whether those facts are sufficient. If not, the declaration will not be accepted.
If an inventor can‘t be reached right away, you can always file the declaration late. In fact, the declaration just has to be filed before the application is allowed. However, you will have to pay a surcharge for the late-filed declaration. Examination will not begin until you pay this surcharge.