MPEP § 604 — MPEP § 604
Current through: 2022-07-01

604-Substitute Statements 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0600 

 Section 604 
 

 
 
 
 
 
 604 Substitute Statements [R-10.2019]

 [Editor Note: This MPEP section is only applicable to patent
 applications filed on or after September 16, 2012.] 

 
 37 CFR 1.64 Substitute statement in lieu of an oath or declaration. 

 
 (a) An applicant under § 1.43 ,
 1.45 or 1.46 may execute a substitute
 statement in lieu of an oath or declaration under § 1.63 
 if the inventor is deceased, is under a legal incapacity, has refused to execute
 the oath or declaration under § 1.63 , or cannot be found or
 reached after diligent effort.
 

 (b) A substitute statement under this section must:
 
 (1) Comply with the requirements of
 §
 1.63(a) , identifying the inventor or joint inventor
 with respect to whom a substitute statement in lieu of an oath or
 declaration is executed, and stating upon information and belief the facts
 which such inventor is required to state;
 

 (2) Identify the person executing the substitute
 statement and the relationship of such person to the inventor or joint
 inventor with respect to whom the substitute statement is executed, and
 unless such information is supplied in an application data sheet in
 accordance with § 1.76 , the residence
 and mailing address of the person signing the substitute statement;
 

 (3) Identify the circumstances permitting the
 person to execute the substitute statement in lieu of an oath or declaration
 under § 1.63 , namely whether the inventor is deceased, is
 under a legal incapacity, cannot be found or reached after a diligent effort
 was made, or has refused to execute the oath or declaration under
 §
 1.63 ; and
 

 (4) Unless the following information is supplied
 in an application data sheet in accordance with §
 1.76 , also identify:
 
 (i) Each inventor by his or her legal name;
 and
 

 (ii) The last known mailing address where the
 inventor customarily receives mail, and last known residence, if an
 inventor lives at a location which is different from where the
 inventor customarily receives mail, for each inventor who is not
 deceased or under a legal incapacity.
 

 
 

 
 

 (c) A person may not execute a substitute statement
 provided for in this section for an application unless that person has reviewed
 and understands the contents of the application, including the claims, and is
 aware of the duty to disclose to the Office all information known to the person to
 be material to patentability as defined in § 1.56 .
 

 (d) Any reference to an inventor's oath or declaration
 includes a substitute statement provided for in this section.
 

 (e) A substitute statement under this section must
 contain an acknowledgment that any willful false statement made in such statement
 is punishable under section 1001 of title 18 by
 fine or imprisonment of not more than 5 years, or both.
 

 (f) A nonsigning inventor or legal representative may
 subsequently join in the application by submitting an oath or declaration under
 §
 1.63 . The submission of an oath or declaration by a
 nonsigning inventor or legal representative in an application filed under
 §
 1.43 , 1.45 or 1.46 
 will not permit the nonsigning inventor or legal representative to revoke or grant
 a power of attorney.
 

 
 

 37 CFR
 1.64 implements the substitute statement provisions of
 35 U.S.C.
 115(d) and applies to applications filed on or after September 16,
 2012.
 

 37 CFR
 1.64(a) provides that an applicant under 37 CFR 1.43 ,
 1.45 or 1.46 may execute a substitute statement
 in lieu of an oath or declaration under 37 CFR 1.63 if the inventor is
 deceased, is under a legal incapacity, has refused to execute the oath or declaration under
 37 CFR
 1.63 , or cannot be found or reached after diligent effort. Thus, the
 following applicant entities may sign a substitute statement on behalf of an inventor when
 such a statement is permitted in a patent application:
 

 
 (i) the inventor’s legal representative under
 37 CFR
 1.43 , where the inventor is deceased or legally
 incapacitated;
 

 (ii) the other joint inventors under 37 CFR
 1.45 , where the inventor refuses to execute the oath or
 declaration or cannot be found or reached after diligent effort;
 

 (iii) an applicant under 37 CFR 1.46 
 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; or
 

 (iv) an applicant under 37 CFR 1.46 
 who is a party who otherwise shows a sufficient proprietary interest in the claimed
 invention under 37 CFR 1.46(b) , where the
 inventor is deceased, legally incapacitated, refuses to sign the declaration or
 cannot be reached or located after diligent effort.
 

 
 35 U.S.C. 115(d) provides that “the
 applicant for patent” may provide a substitute statement under one of the permitted
 circumstances. 37 CFR
 1.64(a) states “an applicant” but the use of “an” is to identify
 alternative applicant types under 37 CFR 1.43 , 1.45 or
 1.46 , and should not be interpreted to provide that only one or some
 of the parties named as the applicant may execute the substitute statement. The following
 examples are provided to assist applicant in execution of the substitute statement:
 

 
 1. If the inventors are the applicant and one of the
 inventors refuses to execute the oath or declaration or cannot be found or reached,
 then under 37
 CFR 1.45 all of the other joint inventors who are the applicant
 (and who executed an oath or declaration) must execute the substitute statement on
 behalf of the non-signing inventor. Joint inventors cannot execute a substitute
 statement for a deceased or legally incapacitated joint inventor. 
 

 2. If the inventor is deceased or legally incapacitated,
 then the substitute statement may be executed by a legal representative under
 37 CFR
 1.43 or by the applicant under 37 CFR
 1.46 . Where the inventors are the applicant, only the legal
 representative would execute the substitute statement for the deceased or legally
 incapacitated inventor, and the Office would recognize the legal representative as an
 applicant in place of the deceased or legally incapacitated inventor. Where the
 deceased or legally incapacitated inventor assigned his or her rights to a party or
 was under an obligation to do so, and the party is named as the applicant under
 37 CFR
 1.46 , then the 37 CFR 1.46 applicant may execute
 the substitute statement without the need to seek a signature from the legal
 representative.
 

 3. An applicant under 37 CFR 1.46 
 can sign under all four permitted circumstances. Where there are multiple assignees
 or obligated assignees who together are the applicant under 37 CFR
 1.46 , all of the parties must execute the substitute statement on
 behalf of the non-signing inventor. As stated previously, 35 U.S.C.
 115(d) specifies that “the applicant for patent” may execute
 the substitute statement. For example, where there are two inventors, and the first
 inventor assigned her rights to Company X and the second inventor was under an
 obligation to assign his rights to Company Y, Company X and Company Y could be named
 as the applicant for patent in the applicant information ( 37 CFR
 1.77(b)(7) ) section of the application data sheet (PTO/AIA/14
 or equivalent) and should preferably be named on filing of the application. If the
 second inventor refused to execute an oath or declaration, then a substitute
 statement must be filed for the second inventor. The substitute statement must be
 executed by an appropriate official of Company X and an appropriate official of
 Company Y since together X and Y are “the applicant for patent.” Under this example,
 neither Company X nor Company Y could be named as the sole applicant in the
 application. All parties having any portion of the ownership in the patent must act
 together as a composite entity in patent matters before the Office. See
 MPEP §
 301 .
 

 
 A non-inventor applicant need not submit proof of the
 permitted circumstance to file a substitute statement (e.g., inventor’s death certificate
 to establish that a named inventor is deceased). However, where the permitted circumstance
 identified in accordance with 37 CFR 1.64(b)(3) is other than the
 inventor’s death or legal incapacity, the inventor must have refused to execute the oath or
 declaration, or applicant must have exercised diligent effort to find or reach the
 inventor. Though proof is not required to be submitted to the Office, proof of attempts to
 secure the inventor’s signature should be kept in applicant’s file. There is no change to
 what is considered a good faith attempt to contact an inventor and what constitutes a
 refusal to sign.
 

 A substitute statement under 37 CFR 1.64 must:
 (1) comply with the requirements of 37 CFR 1.63(a) , identifying the
 inventor or joint inventor with respect to whom a substitute statement in lieu of an oath
 or declaration is executed, and stating upon information and belief the facts which such
 inventor is required to state; (2) identify the person executing the substitute statement
 and the relationship of such person to the inventor or joint inventor with respect to whom
 the substitute statement is executed, and unless such information is supplied in an
 application data sheet in accordance with 37 CFR 1.76 , the residence and mailing
 address of the person signing the substitute statement; and (3) identify the circumstances
 permitting the person to execute the substitute statement, namely whether the inventor is
 deceased, is under a legal incapacity, cannot be found or reached after a diligent effort
 was made, or has refused to execute the oath or declaration under 37 CFR 1.63 . For
 nonprovisional international design applications, the requirement in 37 CFR
 1.64(b)(2) to identify the residence and mailing address of the
 person signing the substitute statement will be considered satisfied by the presentation of
 such information in the international design application prior to international
 registration. See 37 CFR 1.1021(d)(3) .
 

 Where an assignee executes a substitute statement, the
 assignee must supply his/her residence and mailing address. If the assignee is a juristic
 entity, the residence and mailing address of the juristic entity should be used.
 Additionally, if the assignee is a juristic entity, the applicant name and the title of the
 person executing the substitute statement must be included. For a juristic entity, the
 substitute statement may be signed by (A) a person in the organization having apparent
 authority to sign on behalf of the organization (e.g., an officer), or (B) any person if
 the substitute statement sets forth that the person signing is authorized (or empowered) to
 act on behalf of the juristic entity (e.g., the general counsel). See MPEP §§ 324 and
 325 . Note: a power of attorney to a patent practitioner to
 prosecute a patent application executed by the juristic entity does not make that
 practitioner an official of the juristic entity or empower the practitioner to sign the
 substitute statement.
 

 In addition, unless such information is supplied in an
 application data sheet in accordance with 37 CFR 1.76 , or in an international
 design application prior to registration (see 37 CFR 1.1021(d)(3) ), the substitute
 statement must also identify: (1) each inventor by his or her legal name; and (2) the last
 known mailing address where the inventor customarily receives mail, and last known
 residence, if an inventor lives at a location which is different from where the inventor
 customarily receives mail, for each inventor who is not deceased or under a legal
 incapacity. 
 

 A non-inventor applicant is not required to state in the
 substitute statement that he/she has reviewed and understands the contents of the
 application, including the claims. Nevertheless, it should be noted that a person may not
 execute a substitute statement under 37 CFR 1.64 unless that person has
 reviewed and understands the contents of the application, including the claims, and is
 aware of the duty to disclose to the Office all information known to the person to be
 material to patentability as defined in 37 CFR 1.56 . See 37 CFR
 1.64(c) . Any reference to an inventor’s oath or declaration also
 includes a substitute statement as provided for in 37 CFR 1.64 .
 

 A substitute statement under 37 CFR 1.64 must
 contain an acknowledgement that any willful false statement made in such statement is
 punishable under 18
 U.S.C. 1001 by fine or imprisonment of not more than five (5) years,
 or both.
 

 A nonsigning inventor may subsequently join in the
 application by submitting an oath or declaration under 37 CFR 1.63 .
 

 

 

 

 

 

 

 

 

 

 

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 601-Content of Provisional and Nonprovisional Applications 
 601.01-Complete Application 
 601.01(a)-Nonprovisional Applications Filed Under 35 U.S.C. 111(a) 

 601.01(b)-Provisional Applications Filed Under 35 U.S.C. 111(b) 

 601.01(c)-Conversion to or from a Provisional Application 

 601.01(d)-Application Filed Without All Pages of Specification 

 601.01(e)-Nonprovisional Application Filed Without at Least One Claim 

 601.01(f)-Applications Filed Without Drawings 

 601.01(g)-Applications Filed Without All Figures of Drawings 

 
 

 601.02-Power of Attorney 

 601.03-Correspondence Address 
 601.03(a)-Change of Correspondence Address in Applications Filed On or After September 16, 2012 

 601.03(b)-Change of Correspondence Address in Applications Filed Before September 16, 2012 

 
 

 601.04-National Stage Requirements of the United States as a Designated Office 

 601.05-Bibliographic Information - Application Data Sheet (ADS) 
 601.05(a)-Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012 

 601.05(b)-Application Data Sheet (ADS) in Application Filed Before September 16, 2012 

 
 

 
 

 602-Oaths and Declarations 
 602.01-Naming the Inventor; Inventor's Oath or Declaration 
 602.01(a)-Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012 

 602.01(b)-Inventor’s Oath or Declaration in Application Filed Before September 16, 2012 

 602.01(c)-Correction of Inventorship, Name of Inventor, and Order of Names in an Application 
 602.01(c)(1)-Correction of Inventorship in an Application – Request Filed On or After September 16, 2012 

 602.01(c)(2)-Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 

 602.01(c)(3)-[Reserved] 

 
 

 
 

 602.02-New Oath or Substitute for Original 

 602.03-Office Finds the Inventor’s Oath or Declaration Defective 

 602.04-Foreign Executed Oath 

 602.05-Oath or Declaration in Continuing Applications 
 602.05(a)-Oath or Declaration in Continuing Applications Filed On or After September 16, 2012 

 602.05(b)-Oath or Declaration in Continuing Applications Filed Before September 16, 2012 

 
 

 602.06-Non-English Oath or Declaration 

 602.07-Oath or Declaration Filed in United States as a Designated Office 

 602.08-Inventor and Application Information 
 602.08(a)-Inventor Bibliographic Information 

 602.08(b)-Inventor Signature and Name 

 602.08(c)-Identification of Application 

 
 

 602.09-Joint Inventors 

 
 

 603-Supplemental Oath or Declaration 
 603.01-Supplemental Oath or Declaration Filed After Allowance 

 
 

 604-Substitute Statements 

 605-Applicant 
 605.01-Applicant for Application filed on or after September 16, 2012 

 605.02-Applicant for Application Filed Before September 16, 2012 

 
 

 606-Title of Invention 
 606.01-Examiner May Require Change in Title 

 
 

 607-Filing Fee 
 607.01-[Reserved] 

 607.02-Returnability of Fees 

 
 

 608-Disclosure 
 608.01-Specification 
 608.01(a)-Arrangement of Application 

 608.01(b)-Abstract of the Disclosure 

 608.01(c)-Background of the Invention 

 608.01(d)-Brief Summary of Invention 

 608.01(e)-[Reserved] 

 608.01(f)-Brief Description of Drawings 

 608.01(g)-Detailed Description of Invention 

 608.01(h)-Mode of Operation of Invention 

 608.01(i)-Claims 

 608.01(j)-Numbering of Claims 

 608.01(k)-Statutory Requirement of Claims 

 608.01(l)-Claims Present on the Application Filing Date 

 608.01(m)-Form of Claims 

 608.01(n)-Dependent Claims 

 608.01(o)-Basis for Claim Terminology in Description 

 608.01(p)-Completeness of Specification 

 608.01(q)-Substitute or Rewritten Specification 

 608.01(r)-Derogatory Remarks About Prior Art in Specification 

 608.01(s)-Restoration of Canceled Matter 

 608.01(t)-Use in Subsequent Application 

 608.01(u)-[Reserved] 

 608.01(v)-Marks Used in Commerce and Trade Names 

 608.01(w)-Copyright and Mask Work Notices 

 
 

 608.02-Drawing 
 608.02(a)-New Drawing — When Replacement is Required Before Examination 

 608.02(b)-Acceptability of Drawings 

 608.02(c)-Location of Drawings 

 608.02(d)-Complete Illustration in Drawings 

 608.02(e)-Examiner Determines Completeness and Consistency of Drawings 

 608.02(f)-Modifications in Drawings 

 608.02(g)-Illustration of Prior Art 

 608.02(h)-Replacement Drawings 

 608.02(i)-Transfer of Drawings From Prior Applications 

 608.02(j) - 608.02(o)-[Reserved] 

 608.02(p)-Correction of Drawings 

 608.02(q) - 608.02(s)-[Reserved] 

 608.02(t)-Cancelation of Figures 

 608.02(u)-[Reserved] 

 608.02(v)-Drawing Changes Which Require Annotated Sheets 

 608.02(w)-Drawing Changes Which May Be Made Without Applicant’s Annotated Sheets 

 608.02(x)-Drawing Corrections or Changes Accepted Unless Notified Otherwise 

 608.02(y)-Return of Drawing 

 608.02(z)-Allowable Applications Needing Drawing Corrections or Corrected Drawings 

 
 

 608.03-Models, Exhibits, Specimens 
 608.03(a)-Handling of Models, Exhibits, and Specimens 

 
 

 608.04-New Matter 
 608.04(a)-Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date 

 608.04(b)-New Matter by Preliminary Amendment 

 608.04(c)-Review of Examiner’s Holding of New Matter 

 
 

 608.05-“Sequence Listing,” “Large Tables,” or “Computer Program Listing Appendix” Submitted in ASCII Plain Text or a “Sequence Listing
 XML” Submitted as XML File Text 
 608.05(a)-Submission of a “Computer Program Listing Appendix” 

 608.05(b)-ASCII Plain Text Submissions of “Large Tables” and Treatment of Lengthy Tables in a Specification for Patents and Patent Application
 Publications 

 608.05(c)-Submissions of Biological Sequence Listings 

 
 

 
 

 609-Information Disclosure Statement 
 609.01-Examiner Checklist for Information Disclosure Statements 

 609.02-Information Disclosure Statements in Continued Examinations or Continuing Applications 

 609.03-Information Disclosure Statements in National Stage Applications 

 609.04-Content and Timing Requirements for an Information Disclosure Statement 
 609.04(a)-Content Requirements for an Information Disclosure Statement 

 609.04(b)-Timing Requirements for an Information Disclosure Statement 

 
 

 609.05-Examiner Handling of Information Disclosure Statements 
 609.05(a)-Noncomplying Information Disclosure Statements 

 609.05(b)-Complying Information Disclosure Statements 

 609.05(c)-Documents Submitted as Part of Applicant’s Reply to Office Action 

 
 

 609.06-Information Printed on Patent 

 609.07-IDSs Electronically Submitted (eIDS) Using Patent Center 

 609.08-Electronic Processing of Information Disclosure Statement 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:52