The United States Patent and Trademark Office (USPTO) recently proposed rules to require the identification of the attributable owner of a patent application and/or patent. The proposed rules relate to five executive actions issued by the White House on June 4, 2013, designed to increase transparency of the patent system, ensure the highest-quality patents, reduce abusive patent litigation, and level the playing field for innovators. According to the USPTO, the proposed rules will facilitate the examination of patent applications and provide greater transparency concerning the ownership of patent applications and patents. The proposed rules were subjected to two public hearings this past March, and the written comment period recently concluded.
According to the newly-proposed rules, the Office will require the filing of a document that identifies the attributable owner, including the ultimate parent entity, during the pendency of a patent application and at specified times during the life of a patent. In particular, the USPTO is proposing that the attributable owner be identified at the time of filing a patent application (or shortly thereafter), when there is a change in ownership during the pendency of an application (i.e., within three months of such change), at the time of issue fee and maintenance fee payments, and when a patent is involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board (PTAB).
The Office proposes collecting two basic types of attributable owner information: (1) titleholders and (2) enforcement entities. Titleholders are defined as entities that are assigned title to the patent or application, while enforcement entities are entities that are not identified as titleholders, but are necessary to join in a lawsuit in order to have standing to enforce the patent or any patent resulting from the application. In certain situations, depending on the type of license agreement, an exclusive licensee might rise to the level of a “titleholder” or “enforcement entity.” In addition, the USPTO proposes that the attributable owner includes the ultimate parent entity as defined in 16 CFR 801.1(a)(3), which is an entity not controlled by any other entity, as well as hidden beneficial owners, which are entities trying to avoid the need for their disclosure by temporarily divesting themselves of ownership rights through contractual or other arrangements. The Office anticipates that the identification of the attributable owner(s) will be possible via a system developed for electronic uploading and updating of the attributable owner information. Such an electronic system will allow for an applicant or patent owner to correct omissions and errors in the reported attributable owner information. The USPTO further proposes excusing good faith failures to notify the Office of the attributable owner or to provide correct or complete attributable owner information.
The proposed rules will be applicable to all patent applications filed on or after the effective date of a final rule requiring the identification of the attributable owner. For pending applications, the reporting of the attributable owner(s) will be required when the issue fee is due, provided that the notice of allowance is mailed after the effective date of the final rule. For issued patents, the reporting of the attributable owner(s) will be required when the next maintenance fee is paid, if the payment occurs on or after the effective date of the final rule. For any trial proceeding in which a petition was filed on or after the effective date of the final rule, and any supplemental examination or ex parte reexamination in which a request was filed on or after the effective date of the final rule, the reporting of the attributable owner will be required. In addition, the USPTO indicates the effective date will be at least thirty days after the publication of the final rule. While the Office plans to use the attributable owner information for examination purposes in both published and unpublished applications, the attributable owner information would only be made available to the public in published applications and issued patents.
The USPTO asserts that both the Office and the public will benefit from the proposed rules requiring identification of the attributable owner. In particular, the USPTO contends the proposed rules will facilitate patent examination by (i) ensuring that a “power of attorney” is current in each application or proceeding before the Office, (ii) avoiding potential conflicts of interest for Office personnel, (iii) determining the scope of prior art under the common ownership exception and uncovering instances of double patenting, (iv) verifying that the party making a request for a post-issuance proceeding is a proper party, and (v) ensuring that the information the Office provides to the public regarding published applications and issued patents is accurate and not misleading. In addition, the USPTO asserts the proposed rules will benefit the public by (i) enhancing competition and increasing incentives to innovate by providing innovators with information that will allow them to better understand the competitive environment in which they operate, (ii) enhancing technology transfers and reducing the costs of transactions for patent rights, (iii) reducing the risk of abusive patent litigation by helping the public defend itself against abusive assertions by providing more information about all the parties that have an interest in patents and patent applications, and (iv) leveling the playing field for innovators.