By Donald Zuhn --
Last week, the U.S. Patent and Trademark Office published a notice of proposed rulemaking in the Federal Register (79 Fed. Reg. 4105), in which the Office proposed changes to the rules of practice that it claimed would "facilitate the examination of patent applications and . . . provide greater transparency concerning the ownership of patent applications and patents." The notice, entitled "Changes To Require Identification of Attributable Owner," states that:
This initiative is one of a number of executive actions issued by the Administration that are designed to ensure the highest-quality patents, enhance competition by providing the public with more complete information about the competitive environment in which innovators operate, enhance technology transfer and reduce the costs of transactions for patent rights by making patent ownership information more readily and easily available, reduce abusive patent litigation by helping the public defend itself against frivolous litigation, and level the playing field for innovators.
The proposed changes to the rules would require that the "attributable owner" be identified at the time an application is filed (or shortly thereafter), during the pendency of an application when there is a change in the attributable owner (within three months of such change), at the time the issue fee is paid, when maintenance fee payments are made, and if a patent becomes involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board. The notice explains that the proposed rules use the term "attributable owner" rather than "real party in interest" to avoid confusion that might arise from use of the latter term elsewhere in Title 35. The notice also indicates that applicants would not be required to identify the attributable owner for provisional applications or International applications prior to the commencement of the national stage in the United States.
In addition, the notice seeks comments as to whether the Office should permit applicants and patentees to voluntarily report licensing offers and related information to the Office, which the Office would then make available to the public. Licensing information that the Office envisions as possibly being reportable includes the willingness to license, licensing contacts, license offer terms, and commitments to license a patent on royalty-free or reasonable and non-discriminatory terms.
According to the notice, the rules changes would facilitate patent examination by helping to:
(1) Ensure that a "power of attorney" is current in each application or proceeding before the Office; (2) avoid potential conflicts of interest for Office personnel; (3) determine the scope of prior art under the common ownership exception under 35 U.S.C. 102(b)(2)(C) and uncover instances of double patenting; (4) verify that the party making a request for a post-issuance proceeding is a proper party for the proceeding; and (5) ensure that the information the Office provides to the public concerning published applications and issued patents is accurate and not misleading.
The Office also expects the rules changes to:
(1) Enhance competition and increase incentives to innovate by providing innovators with information that will allow them to better understand the competitive environment in which they operate; (2) enhance technology transfer and reduce the costs of transactions for patent rights since patent ownership information will be more readily and easily accessible; (3) reduce risk of abusive patent litigation by helping the public defend itself against such abusive assertions by providing more information about all the parties that have an interest in patents or patent applications; and (4) level the playing field for innovators.
Under the rules changes, the Office would collect two types of owner information: (1) titleholders (i.e., assignees), and (2) enforcement entities (i.e., real-parties-in-interest having the right to enforce an issued patent -- defined by the notice as entities that have not already been identified as titleholders, but who are necessary to be joined in a lawsuit in order to have standing to enforce the patent or any patent resulting from the application). For both of the above categories, the attributable owner would also have to identify the "ultimate parent entity" as defined in 16 C.F.R. § 801.1(a)(3). The notice indicates that ultimate parent entities would be those entities that ultimately control titleholders or enforcement entities. In discussing the above ownership interests, the notice explains that:
In many cases, these types of ownership interests may be coextensive. Specifically, the titleholder (or assignee) is often the same entity that has the right to enforce the patent, and is not controlled by any other entity (and so would not have to separately report an ultimate parent entity). Most additional reporting will need to be done by companies that have complicated corporate structures and licenses, which often include the complex structures used by certain patent assertion entities ("PAEs") to hide their true identities from the public. Some of this additional reporting may include exclusive licensees. Although exclusive licensees are sometimes confidential now, they would only need to be disclosed where their rights are so substantial that they have enforcement rights in the patent. In such circumstances, the public has a strong interest in knowing their identities in order to have an accurate picture of the competitive patent landscape, to allocate their research and development efforts appropriately, and to take licenses or purchase patents proactively and efficiently from the correct entities, as dictated by business needs.
The rules changes would also provide applicants and patentees with the means to correct omissions and errors in the identification of attributable owner, as well as "excuse good faith failures" to notify the Office of the attributable owner or provide correct and complete information about the attributable owner.
The notice indicates that the proposed rules changes are the result, in part, of the work of the White House Task Force on High-Tech Patent Issues, which published a paper detailing five executive actions and seven legislative recommendations "to protect innovators from frivolous litigation and ensure the highest-quality patents in our system" (see "'When the Patent System is Attacked!' -- The White House Task Force on High-Tech Patent Issues"). The Office also notes that in 2011 it began soliciting comments regarding the process of collecting assignment and real-party-in-interest information (see "USPTO News Briefs," December 15, 2011, and "USPTO New Briefs," December 20, 2012).
A discussion of the specific rules changes can be found on pages 4111-14 of the notice, and a list of the proposed changes to the rules can be found on pages 4119-21 of the notice.
Comments on the notice of proposed rulemaking, which must be submitted by March 25, 2014, can be sent by e-mail to AC90.email@example.com, by regular mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, or via the Federal eRulemaking Portal (http://www.regulations.gov). The notice also indicates that the Office will be holding two meetings with stakeholders (at locations and times to be announced) in order to obtain input on the proposed rules changes.