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A patent is a personal property and can be inherited as shown in this answer: Inheritance of enforceable patents .

However what happens if a provisional application is filed. Can an heir claim the invention and file a patent application referencing the earlier provisional application. In such a scenario would the filing date of the provisional application be used or would the filing date of the new patent application be used (since the final patent us using the heirs name).

Thanks

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    I think the answer is yes, but maybe @Maca knows where to find proof
    – user18033
    Jun 15, 2017 at 9:17
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    @DonQuiKong I'm almost certain the answer is yes too, but I'm struggling for references to that effect. Frustratingly, the relevant 35 USC section doesn't expressly declare applications to be personal property, just patents.
    – Maca
    Jun 15, 2017 at 10:37
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    Related: Applications, including provisional applications, can be assigned. An application can be filed on behalf of a deceased inventor.
    – Riccati
    Jun 15, 2017 at 17:50
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    A provisional application is only valid for a year. If a non-provisional application is not filed within that time, the application would be abandoned, which is to say extinguished, and so there is nothing left to own. If the provisional application was assigned, the assignee would continue to have a property right beyond the death of the inventor; if not, it goes into a legal quagmire, similar to the estate of one who dies intestate, and is unlikely to be resolved within the one-year period.
    – Professor Scott
    Jul 13, 2017 at 0:51
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    The estate of an intestate decedent certainly has the legal power to prosecute an application on their behalf, and may have a fiduciary obligation to do so -- thus preserving the rights of heirs prior to distribution.
    – Upnorth
    Jul 28, 2017 at 21:20

1 Answer 1

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Ref. 35 USC 117 and 37 USR 1.43 and MPEP 409.01(a). Assuming the case to be of single inventor: Heir can take up prosecution of the application with USPTO (provisional to non-provisional) i. by filing substitute statement for oath (PTO/AIA/02) ii. along with all documents such as complete specification iii. within prescribed time limit and iv. with applicable fees. For applications with joint inventor heir of deceased inventor may intervene to stake claim of his right. After grant of patent what you read in 'Inheritance of enforceable patents' is applicable.

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  • Good find. But that section seems to talk of the rights of the legal representative (that is, the executor). How does that link to the heir being able to take up prosecution of the application? I note that there is a brief mention of the heir being the de facto legal representative where there is no executor, but I would expect that to be a rather edge case.
    – Maca
    Jul 6, 2017 at 8:58
  • Excerpt from 409.1(b) as explained in page 32 of MPEP-Chapter 0400 (www.uspto.gov/web/offices/pac/mpep/mpep-0400.pdf) "Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to pre-AIA 37 CFR 1.63 and 1.64." @ Maca
    – AD Adhikary
    Jul 7, 2017 at 4:37
  • That expressly only covers the narrow case that the estate does not have an executor or the original applicant dies intestate. Wouldn't the implication of that be that if a will does have an executor, the heir cannot proceed in place of the original applicant?
    – Maca
    Jul 7, 2017 at 5:38
  • As a general rule, the USPTO regulations and rules are not intended to interfere with state laws regarding legal ownership. For instance, a minor child may file and "own" an application, although state laws declare such property be "in trust" for the minor and the parents/guardians the trustees.
    – Upnorth
    Jul 28, 2017 at 21:23

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