[Federal Register Volume 76, Number 226 (Wednesday, November 23, 2011)]
[Proposed Rules]
[Pages 72372-72374]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-30140]
[[Page 72372]]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 3
[Docket No. PTO-P-2011-0077]
Request for Comments on Eliciting More Complete Patent Assignment
Information
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
considering several changes in practice designed to encourage a more
complete record at the USPTO of patent assignments. The USPTO invites
the public to provide comments on methods the USPTO can employ to
collect more timely and accurate patent assignment information both
during prosecution and after issuance.
DATES: To ensure full consideration, written comments should be
received no later than January 23, 2012.
ADDRESSES: Written comments may be submitted, identified as ``Eliciting
More Complete Patent Assignment Information,'' by any of the following
methods:
Electronic Mail: [email protected].
Postal Mail: Saurabh Vishnubhakat, Attorney Advisor,
Office of Chief Economist, United States Patent and Trademark Office,
Mail Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313-1450.
The written comments will be available for public inspection at the
Office of the Chief Economist, located in the Madison West Building,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia 22314. In
addition, the written comments from the public will also be available
via the USPTO Internet Web site (address: http://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as a phone
number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to Saurabh Vishnubhakat by electronic mail at
[email protected] or by telephone at (571) 272-3427.
SUPPLEMENTARY INFORMATION:
I. Background
Collecting Current Assignment Information
The USPTO is considering changes aimed at building a more complete
record of assigned applications and patents. It is increasingly clear
that applications, patents and the completeness of the patent record
play an essential role in the markets of innovation.
Intangible assets now comprise over 50% of the business outputs of
U.S. industry, and intellectual property rights (IPRs) provide a
platform for intangibles to be transacted so that they can provide
profits for innovators and move technologies to their most efficient
uses in the economy.
IPRs are often cleared by their manufacturers or distributers in
order for new products to be legally sold. In such cases, IPR clearance
is often made more difficult and time-consuming, legally risky, and
expensive because current assignment information on patents and
applications is not available. An incomplete assignment record thus
presents a significant barrier to market efficiency.
Markets operate most efficiently when buyers and sellers can find
one another. Yet in our current system, fragmented ownership in the
patent rights covering complex products leads to potential buyers
facing difficulty finding sellers, and potential innovators not
understanding the nature of the marketplace they are considering
entering.
To address the need for accurate assignment data for pending patent
applications and issued patents, the USPTO is interested in providing
more complete patent assignment data to the public, in accordance with
the Office's duty under 35 U.S.C. 2(a)(2) of ``disseminating to the
public information with respect to patents.''
A more complete patent assignment record would produce a number of
benefits. The public would have a more comprehensive understanding of
what patent rights being issued by the United States are being held and
maintained by various entities. The financial markets would have more
complete information about the valuable assets being generated and held
by companies. Patenting inventors and manufacturers would better
understand the competitive environment in which they are operating,
allowing them to better allocate their own research and development
resources, and more efficiently obtain licenses and accurately value
patent portfolios and patent estates that they may seek to acquire.
Changes Under Consideration
To elicit more complete patent assignment data, the USPTO is
considering changes to various provisions of 37 CFR to require that any
change in the identity of the assignee or assignees (i.e., real party
in interest) be made known to the Office within each communication to
the Office by the representative of the applicant during patent
prosecution.
These potential changes include:
(1) Amending 37 CFR to require that any assignee or assignees be
disclosed at the time of application filing;
(2) Amending 37 CFR 3.81 to require that the application issue in
the name of the assignee or assignees as of the date of payment of the
issue fee;
(3) Amending 37 CFR 1.215(b) to require the identification of
assignment changes after filing date for inclusion on the patent
application publication (PGPub);
(4) Amending 37 CFR 1.27(g) to require timely identification of any
new ownership rights that cause the application or issued patent to
gain or lose entitlement to small entity status; and
(5) Amending 37 CFR to provide for discounted maintenance fees in
return for verification or update of assignee information either when a
maintenance fee is paid or within a limited time period from the date
of maintenance fee payment.
With regard to change (2) above, 37 CFR 3.81 currently states that
the ``application may issue in the name of the assignee * * * where a
request for such issuance is submitted with payment of the issue fee.''
The ``request for such issuance'' (in the name of the assignee) is made
by entering the name and residence of the assignee in box 3 of the
issue fee transmittal form (form 85B). The assignee name entered in box
3 of form 85B is printed on the patent and included in USPTO's
searchable U.S. Patent database. The USPTO is considering amending 37
CFR 3.81 to no longer predicate issuance in the name of the assignee on
whether or not the applicant decides to make a ``request for such
issuance.''
Rather, the USPTO is considering amending 37 CFR 3.81 to require
that the assignee be identified at the time of payment of the issue
fee. Correspondingly, Box 3 of Form 85B may be changed to show that the
assignee name must be entered. This could help improve the accuracy of
assignment searches made in the U.S. patent database. As amended by the
[[Page 72373]]
AIA, 35 U.S.C. 118 similarly requires that applicants update assignee
information at the time of allowance:
[I]f the Director grants a patent on an application filed under
this section by a person other than the inventor, the patent shall
be granted to the real party in interest and upon such notice to the
inventor as the Director considers to be sufficient.
With regard to change (3), 37 CFR 1.215(b) currently sets forth
that assignee information must appear on the application transmittal
sheet (e.g., form PTO/SB/05) or the application data sheet (e.g., form
PTO/SB/14) if applicant ``wants'' the PGPub to contain assignment
information. In order to promote more complete assignee data in the
USPTO's searchable PGPub database, the language of Sec. 1.215(b) could
be changed to state that applicant ``must'' provide assignee
information, rather than provide assignee information only if applicant
``wants'' to do so. Additionally, the office could modify forms PTO/SB/
05 and PTO/SB/14 to better indicate that the assignee information must
be entered.
With regard to change (4), the title of 37 CFR 1.27(g)(2) is
``Notification of loss of entitlement to small entity status is
required when issue and maintenance fees are due.'' However, current
Sec. 1.27(g)(2) does not require identification of the new assignee
that caused the application or issued patent to lose entitlement to
small entity status, or in the alternative, a statement that the
current assignee is no longer eligible for small entity status for
other reasons (e.g., a license to a business that does not qualify as a
small entity). The USPTO is considering amending Sec. 1.27(g)(2) to
require such identification or statement.
With regard to change (5), the USPTO is considering implementing
its new fee setting authority, under Sec. 10 of the AIA, in order to
provide for discounted maintenance fees in return for verification or
update of assignee information either when a maintenance fee is paid or
within a limited time period from the date of maintenance fee payment.
The patent assignment recordation statute, 35 U.S.C. 261, provides
that:
An assignment, grant, or conveyance shall be void as against any
subsequent purchaser or mortgagee for a valuable consideration,
without notice, unless it is recorded in the Patent and Trademark
Office within three months from its date or prior to the date of
such subsequent purchase or mortgage.
Failure to record a patent assignment voids the assignment against
a subsequent purchaser or mortgagee of the patent. Where there is no
subsequent purchaser or mortgagee, the statute has no effect other than
to protect against potential future subsequent purchasers or
mortgagees. Moreover, even where the statute may have effect, owners
may still have incentives not to record. Thus, the absence of an
explicit, affirmative recordation requirement may result in an
incomplete assignment record.
If the USPTO pursues this change, the information verifying or
updating assignee information would likely be required to come from a
party under 37 CFR 1.33(b). In addition, any new assignment documents
would likely be required to be recorded in order to claim the discount.
Providing for discounts within a limited time period after a
maintenance fee payment would permit a third party fee submitter to pay
the maintenance fee, followed by the party under 37 CFR 1.33(b)
requesting the discount in the form of a partial refund.
Administratively, the USPTO would have to decide whether the
discount should go to the 37 CFR 1.33(b) party, or to the third party
fee submitter in this situation. The USPTO is aware that a significant
portion of maintenance fees are filed by ``bulk filers'' which are
companies whose business with the USPTO is to pay maintenance fees in
bulk. Since the bulk filers are customarily paid up front for whatever
fee amount is to be paid to the USPTO (discounted or undiscounted),
there should be no loss to bulk filers if discounts were sent directly
to the 37 CFR 1.33(b) party. For the discount to be obtained, the
request for the discount would ideally be accompanied by a verification
of current assignment information, or identification of the new
assignee together with the corresponding assignment documents for
recordation.
II. Request for Comments
Comments on one or more of the following questions would be helpful
to the USPTO:
(1) Is there any reason that the mandatory disclosure of any
assignee or assignees should not take place at the time of application
filing?
(2) Would it be in the public interest for the USPTO to obtain from
applicants updated identification of the assignee at the time of
allowance, e.g. in response to the Notice of Allowance? Are there
limitations on the USPTO's rights and powers to require the reporting
of such information?
(3) Would it be in the public interest for the USPTO to obtain from
applicants updated identification of the assignee during prosecution of
the application? Are there limitations on the USPTO's rights and powers
to require the reporting of such information? Should the USPTO consider
requiring the identification of assignment changes after filing date
for inclusion on the patent application publication (PGPub)? At what
time should changes be recorded relative to the assignment, and what
are the appropriate consequences of non-compliance?
(4) Would it be in the public interest for the USPTO to obtain from
applicants updated identification of the assignee after issue of the
patent? Are there limitations on the USPTO's rights and powers to
require the reporting of such information? At what time should such
identification be made to the Office relative to a change? Should the
USPTO consider requiring the identification of assignment changes
during the maintenance period of the patent right, i.e., after grant,
but prior to patent expiration? What are the appropriate consequences
of non-compliance?
(5) To accomplish adequate and timely recording, are changes to
Agency regulations necessary? What are the most effective and
appropriate means for the USPTO to provide the public with a timely and
accurate record of the assignment of patent rights and the assignee?
(6) Would it help the USPTO's goal of collecting more updated
assignment information if 37 CFR 1.27(g)(2) were amended to require
identification of any new ownership rights that caused the application
or issued patent to lose entitlement to small entity status?
(7) Given the passage of the America Invents Act, is it proper for
the Office to provide for financial incentives for disclosure of
assignment information by way of discounts in fee payments? For
example, would it be more likely for patentees to update assignment
information and record assignment documents on in-force patents if a
maintenance-fee discount were available in return? What are the
appropriate consequences for failure to provide accurate information
when accepting such a discount?
(8) In order to provide a more complete record for transactional
purposes, what changes do you recommend that USPTO make in its
requirements or incentives relating to the disclosure of assignment
information during the patent application process and for issued in-
force patents?
[[Page 72374]]
Dated: November 16, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2011-30140 Filed 11-22-11; 8:45 am]
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