Takeaway: Make sure to document your attempts to have inventors sign their oath and declaration in writing.
For applications filed on or after September 16, 2012 assignees may have the option of filing what is called a substitute statement instead of an oath or declaration by the inventor. This issue may arise in a number of ways; sometimes an inventor may go missing, they may pass away, or they may refuse to cooperate because they have quit their job. However this issue arises, the solution may be to file a substitute statement on their behalf so you as the assignee may continue with the prosecution of the application without abandoning your patent rights.
According to 37 CFR 1.64(a)(iii) an applicant who is the assignee or party to whom the inventor is under an obligation to assign, where the inventor is deceased, legally incapacitated, refuses to execute the oath or declaration, or cannot be found or reached after diligent effort may sign a substitute statement on behalf of an inventor.
To file a substitute statement you must show evidence that you are the true party of interest. This means that you have the right to prosecute the application because you have some sort of ownership rights over the invention. Additionally, you must provide the United States Patent and Trademark Office with evidence of why the inventor is unavailable and the efforts you have made to contact the inventor.
Because you are required to provide evidence of unavailability and diligent efforts to contact the inventor it is important as an assignee to document your attempts to have the inventor sign an oath or declaration.
If you have any questions or comments about patent prosecution feel free to call Cislo & Thomas LLP to set up an initial consultation today.