The USPTO has proposed new rules that would require recordation of the “attributable owners” of patents and pending applications. Although current statute provides incentives for optionally recording assignments of patents and applications with the USPTO, the proposed rules, if adopted, would go beyond the current assignment recordation regime in requiring identification of interested parties other than just assignees, during prosecution of an application and at stages during the pendency of a granted patent, and abandonment when these requirements are not met.
The stated purposes of the proposed rules are “to increase transparency of the patent system, ensure the highest-quality patents, reduce abusive patent litigation and level the playing field for innovators . . . as well as to improve the incentives for future innovation, to enhance competition by providing the public with more complete information about the competitive landscape and technology marketplace by making patent ownership information more readily available, and to help the Office carry out its task of patent examination.” To achieve these goals, the rules would require identification of “attributable owners,” defined as “titleholders” (e.g., assignees), “enforcement entities”(i.e., those “necessary to be joined in a lawsuit in order to have standing to enforce the patent” such as exclusive licensees), “ultimate parent entities . . . i.e., the entity that ultimately controls the actions of any” titleholder or enforcement entity, and “hidden beneficial owners” who are “entities that are trying to avoid the need for their disclosure by temporarily divesting themselves of ownership rights through contractual or other arrangements . . . to discourage intentional shielding of such ownership interests.”
Such entities would need to be disclosed during prosecution at the time of filing, and updated within three months of any changes during prosecution and when the issue fee is paid. Failure to meet these requirements would result in abandonment of the application. For issued patents, disclosure would be required with payment of maintenance fees and with the commencement of various post-grant proceedings at the PTAB. Given the burdens these rules would impose on applicants and patentees if adopted, opposition is likely to be strong, such as that they exceed the USPTO’s procedural rulemaking authority.
Written comments received by March 25, 2014 will be considered by the USPTO when deciding adoption of the rules. Comments can be given by email (AC90.firstname.lastname@example.org), postal mail (Mail Stop Comments-Patents Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450 Attention: James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy) or by the Federal eRulemaking Portal.