[Federal Register Volume 77, Number 227 (Monday, November 26, 2012)]
[Proposed Rules]
[Pages 70385-70389]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-28333]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 3

[Docket No. PTO-P-2012-0047]


Notice of Roundtable on Proposed Requirements for Recordation of 
Real-Party-in-Interest Information Throughout Application Pendency and 
Patent Term

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of public meeting; request for comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
considering promulgating regulations that would require greater public 
transparency concerning the ownership of patent applications and 
patents by requiring the provision of real-party-in-interest 
information during patent prosecution and at certain times post-
issuance. As part of this initiative, the USPTO is conducting a 
roundtable to obtain public input from organizations and individuals on 
how the USPTO could change its rules of practice to collect and provide 
such ownership information and make it publicly available. The USPTO 
plans to invite a number of roundtable participants from among patent 
user groups, practitioners, industry, independent inventor 
organizations, academia, and government. The roundtable also is open 
for any member of the public to provide input.

[[Page 70386]]


DATES: The roundtable will be held on Friday, January 11, 2013, 
beginning at 8:30 a.m. and ending at 12:00 p.m. EDT.
    The deadline for receipt of requests to participate in the 
roundtable is Friday, December 21, 2012.
    The deadline for receipt of written comments is Friday, January 25, 
2013.

ADDRESSES: The roundtable will be held at the USPTO, in the Madison 
Auditorium on the concourse level of the Madison Building, which is 
located at 600 Dulany Street, Alexandria, Virginia 22314.
    Requests to participate at the roundtable are required and must be 
submitted by electronic mail to saurabh.vishnubhakat@uspto.gov. 
Requests to participate at the roundtable should indicate the following 
information: (1) The name of the person desiring to participate and his 
or her contact information (telephone number and electronic mail 
address); and (2) the organization(s) he or she represents.
    Written comments may be submitted by either of the following 
methods:
     Electronic Mail: 
saurabh.vishnubhakat@uspto.govmailto:SMEpatenting@uspto.gov.
     Postal Mail: Saurabh Vishnubhakat, Expert Advisor, Office 
of Chief Economist, United States Patent and Trademark Office, Mail 
Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313-1450.
    Although written comments may be submitted by postal mail, the 
USPTO prefers to receive written comments via electronic mail.
    The written comments and list of the roundtable participants and 
their associations will be available for public inspection at the 
Office of Chief Economist, located in the Madison Building East, Second 
Floor, 600 Dulany Street, Alexandria, Virginia 22314, and will be 
available via the USPTO Web site (address: http://www.uspto.gov). 
Because written comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the written comments.

FOR FURTHER INFORMATION CONTACT: Requests for additional information 
should be directed to Saurabh Vishnubhakat by electronic mail at 
saurabh.vishnubhakat@uspto.gov or by telephone at (571) 272-6900.

SUPPLEMENTARY INFORMATION: The USPTO is considering means for 
collecting and disseminating information about the real-party(ies)-in-
interest for patent applications and issued patents. It is increasingly 
clear that the completeness of the patent record, including the 
ownership of patent applications and patents, plays an essential role 
in the efficient functioning of innovation markets. Since intangible 
assets now make up over fifty percent of the value of business outputs 
of U.S. industry, intellectual property rights are one key mechanism by 
which such intangibles can be exchanged, providing profits for 
innovators and moving technologies to their most efficient uses in the 
economy.
    To avoid business and legal risk, the clearing of intellectual 
property rights is often undertaken by manufacturers or distributors 
prior to production and marketing. In such cases, the clearance of 
intellectual property rights is often made more difficult and time-
consuming, legally risky, and expensive because current ownership 
information on patent applications and issued patents is not available. 
An incomplete ownership record thus presents a significant barrier to 
competition and 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 to potential innovators not understanding the nature of the 
marketplace they are considering entering.
    To address the need for accurate ownership information for pending 
patent applications and issued patents, the USPTO is interested in 
providing more complete patent ownership information 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 ownership 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. 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.
    Beyond providing these public benefits, accurate and up-to-date 
ownership information is needed to facilitate examination of patents by 
the USPTO, particularly in light of certain new provisions of the 
America Invents Act, Public Law 112-29 (Sept. 16, 2011) (``AIA''), that 
will become effective in March 2013. Courts have previously recognized 
that the USPTO has the authority to promulgate regulations that ``shall 
govern the conduct of proceedings in the Office.'' Star Fruits S.N.C. 
v. U.S., 393 F.3d 1277, 1282 (Fed. Cir. 2005) (quoting 35 U.S.C. 
2(b)(2)); see also Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335 
(Fed. Cir. 2008) (``To comply with section 2(b)(2)(A), a Patent Office 
rule must be `procedural'--i.e., it must `govern the conduct of 
proceedings in the Office.' ''). Pursuant to this authority, the Office 
may require the submission of information that is reasonably necessary 
to proper examination or treatment of the matter at hand, provided that 
such requests are not arbitrary or capricious. See Star Fruits, 393 
F.3d at 1283-84.
    Furthermore, the USPTO seeks real-party-in-interest information in 
part to ensure that a ``power of attorney'' is current in each case. 
The USPTO has a strong interest in ensuring that current 
representatives in any proceeding before the USPTO are authorized by 
the current owner. See Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. 
Cir. 2006) (``[T]he PTO has broad authority to govern the conduct of 
proceedings before it and to govern the recognition and conduct of 
attorneys.'').
    Moreover, for patent proceedings before the Office, it is important 
for the USPTO to know the real party(ies) in interest in order to avoid 
potential conflicts of interest for judges and examiners alike. For 
example, ``in the case of the Board, a conflict would typically arise 
when an official has an investment in a company with a direct interest 
in a Board proceeding. Such conflicts can only be avoided if the 
parties promptly provide information necessary to identify potential 
conflicts.'' See Rules of Practice for Trials Before the Patent Trial 
and Appeal Board and Judicial Review of Patent Trial and Appeal Board 
Decisions, 77 FR 48612, 48617 (Aug. 14, 2012). Like administrative 
patent judges at the Board, ``[p]atent examiners are quasi-judicial 
officials.'' Western Elec. Co., Inc. v. Piezo Tech., Inc., 860 F.2d 
428, 431 (Fed. Cir. 1988) (citing Butterworth v. United States ex rel. 
Hoe, 112 U.S. 50, 67 (1884)). Accordingly, a clear identification of 
the real-party-in-interest is important to ensure that officials are 
able to recuse themselves in view of any conflict-of-interest apparent 
from the disclosure. In addition, ``[t]he identity of a real party in 
interest might also affect the credibility of evidence

[[Page 70387]]

presented in a proceeding.'' 77 FR at 48617.
    Additionally, changes made by the America Invents Act to the 
categories of what constitutes prior art increase the need to have 
accurate and up-to-date ownership information about patent applications 
and issued patents in order to make determinations of novelty. See 35 
U.S.C. 102(b). In particular, section 102(b)(2)(C) exempts as prior art 
those patent applications or issued patents that name different 
inventors where ``the subject matter disclosed and the claimed 
invention, not later than the effective filing date of the claimed 
invention, were owned by the same person or subject to an obligation of 
assignment to the same person'' (emphasis added). Because ownership of 
an earlier-filed patent application or issued patent may prevent its 
use as prior art against a later-filed patent application, 
patentability may depend not just on the content of the prior art 
patent application or issued patent, but also on who owns it.
    Further, new section 102(b)(2)(C) differs from the previous 
statutory provision on which it was based, 35 U.S.C. 103(c)(1) (2011). 
While section 103(c)(1) (2011) concerned an exception to obviousness 
rather than an exception to what constitutes prior art, it otherwise 
recited virtually identical language to that of the current section 
102(b)(2)(C) except that section 103(c)(1) stated that patentability 
was not precluded where ``the subject matter and the claimed invention 
were, at the time the claimed invention was made, owned by the same 
person or subject to an obligation of assignment to the same person.'' 
Under the earlier section 103(c)(1), whether earlier subject matter was 
prior art was established at the time when the claimed invention in the 
later-filed application was ``made,'' by considering whether the 
earlier subject matter was owned by the same entity that owned (or had 
a right to own) the claimed invention that was just made. In contrast, 
under new section 102(b)(2)(C), there may be an opportunity--in the 
period before the filing of the second application--for ownership to 
change in a way that affects whether the earlier patent or patent 
application is prior art for purposes of section 102(b). As a result, 
tracking ownership information for patent applications and issued 
patents is directly relevant to questions of novelty during prosecution 
and to mechanisms for challenging patents post-issuance.
    In the prosecution context, the new section 102(b)(2)(C) presents 
the possibility that a greater amount of prior art might be subject to 
this exemption than under previous section 103(c)(1), which, in turn, 
could render the current method of handling the possibility of common 
ownership--the examiner presenting an initial rejection, and the 
applicant rebutting the rejection with proof of ownership, see MPEP 
section 706.02(1)(2)--inefficient in a manner that would undermine the 
principles of compact prosecution. See id. at section 706 (``The goal 
of examination is to clearly articulate any rejection early in the 
prosecution process so that the applicant has the opportunity to 
provide evidence of patentability and otherwise reply completely at the 
earliest opportunity.'').
    In addition, the availability of new types of third-party 
proceedings that may be filed with the USPTO has created a need for the 
Office to collect and publish timely ownership information. Previously, 
many ``proceedings in the Office'' were initiated by patent applicants 
or applicants-turned-patentees. In the relatively recent past, third 
parties have become able to initiate ex parte reexamination proceedings 
(1981) as well as inter partes reexamination proceedings (1999). Such 
third party-initiated reexamination proceedings often arose out of 
disputes between the patentees and third-party requestors. Now, under 
the AIA, parties with no ownership interest in the patent, i.e., third 
parties, are entitled to request initiation of certain post-grant 
proceedings before the Office, including inter partes review under 35 
U.S.C. 311 and post-grant review under 35 U.S.C. 321. Because of 
certain statutory deadlines imposing short time frames for action 
(e.g., nine months after patent grant, see 35 U.S.C. 321(c)), it may 
often be impractical or impossible for third parties to discover 
ownership information through other means, such as through disputes 
arising between patentees and third parties. Accordingly, whether to 
initiate such proceedings is a decision that third parties will often 
have to make based primarily on the USPTO record, making it important 
for that record to contain ownership information that is as accurate 
and complete as possible.
    In particular, both inter partes reexamination and post-grant 
review proceedings contemplate that challenges may be predicated on 
prior art under 35 U.S.C. 102(b)(2)(C). See 35 U.S.C. 311(b) and 321(b) 
(allowing for use of prior art under, inter alia, section 102(b)(2)(C) 
in inter partes and post-grant review proceedings, respectively). But 
third parties will not necessarily be able to ascertain what is 
properly considered prior art under section 102(b)(2)(C) without access 
to accurate ownership information for patent applications and issued 
patents (including a record of whether and how ownership has changed). 
In part for this reason, the Office plans not only to collect such 
ownership information, but also to make it publicly available 
concurrently with the publication of patent applications or issued 
patents.
    In addition, for patents that enter any kind of post-grant review 
proceedings, the Office requiring the submission of updated ownership 
information for that patent (or a confirmation that the ownership 
information has not changed) would facilitate reexamination for the 
reasons discussed previously in this notice. Furthermore, it would 
allow the Office to verify that a bona fide third party is making the 
request for inter partes review or post-grant review, as required by 35 
U.S.C. 311(a) and 321(a), respectively; to verify that the petitioner 
applying for review of a covered business method patent is a real-
party-in-interest or privy to an entity that has been sued or charged 
with infringement of that patent, as required by 37 CFR 42.302(a); and 
to verify that a bona fide patent owner is making the request for 
supplemental examination, as required by 35 U.S.C. 257(a).
    Moreover, because the USPTO will be collecting and publishing this 
information, it also has an interest in ensuring that such public 
information remains as accurate and up-to-date as possible. This is 
consistent with several statutory provisions directing the Office to 
disseminate information to the public as well as those directing the 
Office to provide access to information through electronic means. See 
35 U.S.C. 2(a)(2) (creating a duty of ``disseminating to the public 
information with respect to patents''); section 10(a)(4) (providing for 
publication of information, including ``annual indexes of * * * 
patentees''); section 10(b) (providing that the ``Director may exchange 
* * * for publications desirable for the use of the [Office]''); and 
section 41(i) (creating a duty to provide access to information 
electronically).
    The USPTO published a Request for Comments on November 23, 2011, 
regarding whether regulations should be promulgated for the collection 
of assignment and real-party-in-interest information for both 
applications and patents. See Request for Comments on Eliciting More 
Complete Patent Assignment Information, 76 FR 72372 (Nov. 23, 2011). 
Responses to this request for comments were more favorable towards the 
proposal than unfavorable. See http://www.uspto.gov/

[[Page 70388]]

patents/law/comments/patent--assignment--information.jsp.
    The USPTO is now planning to conduct a roundtable at its 
Alexandria, Virginia, campus to discuss with the patent and innovation 
community whether--and, if so, how--the USPTO should require submission 
of real-party-in-interest information throughout the pendency of an 
application and the enforceable life of a patent. To focus the 
discussion, the USPTO provides the following description of what 
information it envisions collecting, and how such information will be 
collected and published:

Information To Be Collected

    The USPTO proposes to collect ``real-party-in-interest'' (``RPI'') 
information on patent applications and patents in order to facilitate 
examination before the Office and for the other reasons and benefits 
discussed above. The USPTO believes that these interests can be met 
through the collection of RPI information where RPI is defined in at 
least two different ways, described in more detail below. It is 
important to note that the Office would consider whatever definition is 
adopted for this purpose as not necessarily coinciding with how the 
term real-party-in-interest may be used elsewhere in the Office, or 
with the term ``ownership'' as that term is used in Title 35 and in the 
Office's implementing regulations. The Office welcomes comments on the 
definitions proposed here for RPI, as well as the suitability of other 
definitions or standards.

Alternative Definition 1: ``Broad'' RPI

    Under the first alternative definition, RPI would correspond to 
those entities having the legal right to enforce the patent, i.e., 
those parties that would be necessary and sufficient to bring a legal 
infringement action. See Vaupel Textilmaschinen KG v. Meccanica Euro 
Italia SPA, 944 F.2d 870, 875-76 (Fed. Cir. 1991); 35 U.S.C. 154(a)(1). 
As discussed above, this information is directly relevant to 
identifying conflicts of interest that might arise in examination 
contexts. Moreover, it is consistent with the need to make prior art 
determinations under 35 U.S.C. 102(b)(2)(C) because it identifies all 
parties that might have a claim to ownership of the patent application 
or issued patent. This definition would likely require disclosure of 
exclusive licensees in certain cases. This RPI information would be 
useful both to the Office and to the public by providing a clear idea 
of all the entities that have an interest in the patent application or 
issued patent as well as, for patents, a clear idea of the entity(ies) 
in possession of the legal right to exclude. See 35 U.S.C. 154.

Alternative Definition 2: ``Limited'' RPI

    Under the second alternative definition, the interested parties 
needing to be disclosed would be limited to the legal title holder(s) 
and ``ultimate parent entity(ies)'' of the patent application or issued 
patent. The term ``ultimate parent entity'' would be based on the 
definition (along with the accompanying examples) set forth in 16 CFR 
801.1(a)(3), which defines it as ``an entity which is not controlled by 
any other entity.'' The rationale behind defining RPI in this manner is 
to limit the entities that need to be identified based on the 
assumption that although not every interested entity would be listed, 
information about these other parties (if needed) could, in most cases, 
be deduced or obtained from the information provided. For example, 
information provided about the ultimate parent entity would be likely 
to alert the examiner to a conflict of interest not otherwise disclosed 
in many cases, even if the actual conflict concerned a subsidiary 
entity that did not itself need to be disclosed. Focusing information 
collection on the ultimate parent entity could also facilitate searches 
for patent applications and issued patents having common ownership, 
which could be of benefit to the Office and public alike. Moreover, 
this narrower definition of RPI would have the benefit of potentially 
reducing administrative costs in collecting and updating RPI 
information. Exclusive licensee information would likely not need to be 
provided, and following section 801.1, the United States or foreign 
states would not need to be reported as ultimate parent entities 
(though they may still be legal title holders). Although the Office 
considers the definition in section 801.1 as a model, the Office 
welcomes any suggestions on how to modify the definition to be more 
suitable for use before the USPTO, and on whether the direct adoption 
of a well-established definition would itself be beneficial.

Timing of RPI Information Collection

    For purposes of facilitating examination and the ability of third 
parties to appropriately seek to challenge patents post-issuance, the 
USPTO aims to provide RPI information for patent applications and 
issued patents that is as up-to-date and accurate as possible. To this 
end, the USPTO envisions collecting such information at the time that 
an application is initially filed for internal examination purposes 
(though this information will be treated as confidential in accordance 
with the provisions of 35 U.S.C. 122); requiring applicants to notify 
the Office about any changes in RPI information during prosecution; and 
verifying on at least two occasions that the information on file is 
correct: immediately prior to 18-month publication (though patent 
applications would only be published in accordance with 35 U.S.C. 122), 
and prior to issuance. For issued patents, the Office will likewise 
require the information on file to be verified or updated when 
maintenance fees are paid and if the patent becomes involved in any 
post-issuance proceedings before the Office.
    The Office plans to collect RPI information from applicants in the 
application data sheet (for example, Application Data Sheet, PTO/SB/14) 
instead of, or in addition to, the current ``Assignee'' information. 
Intervening updates would be submitted to the Office through the 
submission of an additional ``change form.'' An applicant would have a 
duty to update the RPI information within a reasonable time period of 
any change. See 37 CFR 1.56. The Office envisions that a reasonable 
period of time would be within three months of any reportable change, 
similar to the presumptive period of time in which applicants are 
expected to reply to any notice or action by the Office in the context 
of patent term adjustments under 37 CFR 1.704(b). The pre-18-month 
publication verification would likely necessitate the submission of a 
new form. For issuance, the Office envisions this process as simply 
including a statement that the applicant or owner ``certifies that the 
RPI information on file at the USPTO is accurate and unchanged.'' Any 
unreported changes at this time could be fixed by filling out the 
aforementioned change form and, as appropriate, any fees or explanation 
why such change had not been reported earlier. The USPTO welcomes 
feedback about how long a presumptive reasonable time period would be 
and about mechanisms for excusing late updates in appropriate 
circumstances. See, e.g., 37 CFR 1.137 (providing for revival of lapsed 
patents or patent applications where delay was unavoidable or 
unintentional).
    After patent issuance, the USPTO intends to have RPI information 
verified at the time of maintenance fee payments using a procedure 
similar to that outlined for issuance of a patent (the inclusion of a 
statement verifying that the USPTO information is accurate, or the 
submission of a change form if not). The Office likewise plans to 
collect such

[[Page 70389]]

information any time that an issued patent is involved in a proceeding 
before the Office post-issuance, including: reissue applications under 
35 U.S.C. 251, supplemental examinations under 35 U.S.C. 257, 
reexaminations under 35 U.S.C. 302, inter partes reviews under 35 
U.S.C. 311, post-grant reviews under 35 U.S.C. 321, and the 
transitional program for covered business method patents under 37 CFR 
part 42, subpart D.
    In sum, the Office envisions collecting or verifying RPI 
information as follows:

------------------------------------------------------------------------
 
------------------------------------------------------------------------
Submission of application....  Applicant provides RPI information as
                                part of the original application data
                                sheet.
Through pendency of            Applicant is responsible for ensuring
 prosecution.                   that any changes in RPI information are
                                submitted to the Office within a
                                reasonable period of time.
Prior to 18-month publication  Applicant submits a form verifying that
 date.                          RPI information on file is accurate.
                                Changes may be submitted in a
                                supplemental form with an explanation
                                for why the submission is timely. Note
                                that information may be collected for
                                all applications, though applications
                                will only be published in accordance
                                with 35 U.S.C. 122.
Upon issuance................  Applicant's payment is accompanied by a
                                form statement that RPI information on
                                file is accurate. Changes may be
                                submitted in a supplemental form with an
                                explanation for why the submission is
                                timely.
Upon payment of maintenance    Patentee's payment is accompanied by a
 fees.                          form statement that RPI information on
                                file is accurate, or is accompanied by
                                changes in a supplemental form.
Involvement in any post-grant  Patentee is required to verify that RPI
 proceedings.                   information on file is accurate, or to
                                submit changes in a supplemental form.
------------------------------------------------------------------------

    The Office envisions this process applying to new applications 
filed after the date of any final rules coming into effect and after 35 
U.S.C. 102(b)(2)(C) becomes effective on March 16, 2013. For pending 
applications where there has already been submission of an application 
data sheet, applicants would be required to submit RPI information at 
the next event described above (prior to 18-month publication or prior 
to issuance, or in conjunction with any continuing applications), and 
would then be responsible for updating any changes thereafter, through 
patent issuance. For issued patents, RPI information would be required 
in conjunction with the payment of the next maintenance fee, and with 
any subsequent maintenance fee payments thereafter--or instead, 
verification that the RPI information on file is unchanged.

Provision of RPI Information to the Public

    While the USPTO would be able to use the information collected 
immediately for examination purposes, RPI information would be made 
available to the public in accordance with 35 U.S.C. 122, with RPI 
information being published in conjunction with the publication of a 
patent application or issued patent. The Office anticipates providing 
information about the current RPI as well as a history of any RPI 
changes in an accessible electronic format, such as on Public PAIR, in 
conjunction with a patent application or issued patent.

Details About the Roundtable

    The number of participants in the roundtable is limited to ensure 
that all who are speaking will have a meaningful chance to do so. The 
USPTO plans to invite a number of participants from patent user, 
practitioner, industry, and independent inventor organizations, as well 
as academia, industry, and government to provide input. The USPTO also 
plans to have a few at-large participants based upon requests received 
in response to this notice to ensure that the USPTO is receiving a 
balanced array of views on possible requirements for patent ownership 
recordation.
    The roundtable is open to the public, but participation in the 
roundtable is by request, as the number of participants in the 
roundtable is limited. While members of the public who wish to 
participate in the roundtable must do so by request, members of the 
public who wish solely to observe need not submit a request to attend. 
Any member of the public, however, may submit written comments for 
consideration by the USPTO on issues raised at the roundtable or on any 
issue pertaining to patent ownership recordation. Persons submitting 
written comments should note that the USPTO does not plan to provide a 
``comment and response'' analysis of such comments, as this notice is 
not a notice of proposed rulemaking.
    The USPTO plans to make the roundtable available via Web cast. Web 
cast information will be available on the USPTO's Internet Web site 
before the roundtable. The written comments and list of the roundtable 
participants and their associations will also be posted on the USPTO's 
Internet Web site.

    Dated: November 9, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-28333 Filed 11-23-12; 8:45 am]
BILLING CODE 3510-16-P