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« Medtronic CoreValve, LLC v. Edwards Lifesciences Corp. (Fed. Cir. 2014) | Main | SmartGene, Inc. v. Advanced Biological Laboratories, SA (Fed. Cir. 2014) »

January 28, 2014

Comments

I'm still digesting this, but one thing is clear: if the rules are adopted, we can all go from being patent practitioners to corporate secretaries. Or detectives. I prefer doing patent work myself, and that's what my clients prefer to pay for.

Perhaps the executive branch should just pass its own law changing the fact that patents are personal property.

Next we perhaps should make public a complete list of every individual's (real person and legal person) property holdings so that everything is transparent. I hear that the NSA has data to share, and only those who have something to hide would disagree, right?

Or if the logic behind these rule changes is taken at face value, perhaps we should change corporations law to remove the ability to have ANY assets so hidden. After all, patents are not the only thing that so constrains complete knowledge on a competitive basis, and streamlining personal property and corporate structure would have additional benefits of streamlining tax codes as well.

@Dan Feigelson--totally agree. Yikes. Also, what about a situation where a US company has licensed a patent from an assignee that is a foreign company? If the US patent attorney (i.e., me) doesn't get accurate information from the foreign company about the 'ultimate parent entity,' what would the consequence be? Holding the US patent invalid, thereby injuring not only the foreign company but the (potentially faultless) US company? At least any such changes should only affect new filings, so that any consequences might possibly be addressed in the license.

With so many legal determinations, can patent agents even comply with these rules? Or can they rely on the client to provide the correct information? Or the client's corporate attorneys?

I love the (extreme) overreaching part on Federal Register page 4110 "Hidden Beneficial Owners:"

Information required to be reported would also include identification of entities that are trying to avoid the need for their disclosure by temporarily divesting themselves of ownership rights through contractual or other arrangements. THE OFFICE DEEMS the beneficiaries of these temporarily divested rights to be attributable owners. (emphasis added)

The Office is rewriting Corporations law all on its own.

But some will no doubt say that the ends justify the means. Whether that type of thinking holds water (or is supposed to hold water) in our legal system, I remain...

Don/Skeptical,

There is a huge issue as to whether the USPTO has the statutory authority to promulgate this proposed rule in view of the Tafas case: is this proposed rule permitted by statute and is it substantive or procedural? Unfortunately, there is also the 2006 case of Star Fruits where a divided Federal Circuit panel upheld the authority of the USPTO to enforce an analogous 37 CFR 1.105 (permitting an examiner to request information from the applicant on penalty of abandonment of the application). Judge Newman vociferously dissented in that case (and for good reason), arguing that 37 CFR 1.105, and how it was applied, violated the Administrative Procedures Act.

EG,

Over at Patently-O Ron Katznelson traced the statutory authority and anon traced the statutory intent.

Neither supports the scope of the proposed rules.

The comments to this entry are closed.

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