[Federal Register Volume 79, Number 16 (Friday, January 24, 2014)]
[Proposed Rules]
[Pages 4105-4121]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-01195]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2013-0040]
RIN 0651-AC90
Changes To Require Identification of Attributable Owner
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice to facilitate the
examination of patent applications and to provide greater transparency
concerning the ownership of patent applications and patents. 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 Office is proposing in this
document to require that the attributable owner, including the ultimate
parent entity, be identified during the pendency of a patent
application and at specified times during the life of a patent. The
Office is specifically proposing that the attributable owner be
identified on filing of an application (or shortly thereafter), when
there is a change in the attributable owner during the pendency of an
application, at the time of issue fee and maintenance fee payments, and
when a patent is involved in supplemental examination, ex parte
reexamination, or a trial proceeding before the Patent Trial and Appeal
Board (PTAB). The Office is also seeking comments on whether the Office
should enable patent applicants and owners to voluntarily report
licensing offers and related information to the Office, which the
Office will then make available to the public in an accessible online
format.
DATES: Comment deadline date: Written comments must be received on or
before March 25, 2014.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: [email protected]. Comments may also be
submitted by postal 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.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
[[Page 4106]]
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments submitted in plain text are
preferred, but also may be submitted in ADOBE[supreg] portable document
format or MICROSOFT WORD[supreg] format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located in Madison East,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: James Engel, Senior Legal Advisor
((571) 272-7725), or Erin M. Harriman, Legal Advisor ((571) 272-7747),
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: On June 4, 2013, the White House issued
five executive actions designed to increase transparency of the patent
system, ensure the highest-quality patents, reduce abusive patent
litigation and level the playing field for innovators. The first of
these executive actions is titled ``Making `Real Party in Interest' the
New Default,'' and calls for the Office to begin a rulemaking process
to require patent applicants and patent owners to regularly update
ownership information when the applicant or patent owner is involved in
a proceeding before the Office, including designation of the ``ultimate
parent entity(ies)'' of those owners. To help achieve the above goals
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, the Office is
proposing changes to the rules of practice concerning the attributable
owner of pending patent applications and patents. This document and the
proposed rules have adopted the term ``attributable owner'' rather than
``real party in interest'' to avoid confusion given that the term
``real party in interest'' is used elsewhere in title 35, United States
Code (e.g., 35 U.S.C. 118, 315, 317, 325, 327).
The proposed changes will facilitate patent examination and other
parts of the Office's internal processes 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. Beyond providing these benefits to the Office,
collecting attributable owner information and making it publicly
available is expected 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.
The Office is also seeking comments on whether the Office should
enable patent applicants and owners to voluntarily report licensing
offers and related information to the Office, which the Office will
then make available to the public in an accessible online format. Such
licensing information could include willingness to license, as well as
licensing contacts, license offer terms, or commitments to license the
patent, e.g., on royalty-free or reasonable and non-discriminatory
terms. Further background and details about this request for comments
are below.
In order to engage the public and provide as much opportunity for
feedback and input as possible, the Office intends to hold two
stakeholder input meetings at which members of the public can provide
comment to the Office on this proposal. These meetings will be held
during the public comment period for this proposal, at times and
locations to be determined. The Office will publicize the times and
locations of these meetings through the Office's Internet Web site
(http://www.uspto.gov).
Summary of Major Provisions: The Office proposes collecting two
basic types of attributable owner information: (1) Titleholders and (2)
enforcement entities. If applicable, the attributable owner would also
include the ultimate parent entity as defined in 16 CFR 801.1(a)(3) of
either of these two reporting categories. The Office proposes adopting
this ``ultimate parent entity'' definition rather than creating a new
one to minimize the need for additional investigation and analysis of
ownership structures. The Office also proposes that ``attributable
owner'' include any entity that creates or uses any type of arrangement
or device with the purpose or effect of temporarily divesting such
entity of attributable ownership or preventing the vesting of such
attributable ownership.
The Office proposes that patent applicants identify the
attributable owner or owners when an application is filed (or shortly
thereafter), when attributable owner changes during the pendency of an
application (within three months of such change), when the issue fee is
due for an application that has been allowed, when a maintenance fee is
due, and when a patent becomes involved in certain post-issuance
proceedings at the Office, including in supplemental examination, ex
parte reexamination, or a trial proceeding before the PTAB.
The Office plans to work with its user community to implement this
reporting system in a user-friendly manner and welcomes input on how
this can best be accomplished. Subject to financial and resource
constraints, the Office anticipates, in particular, developing a system
for the electronic uploading and updating of attributable owner
information, including bulk uploading and updating of attributable
owner information when any ownership transfers occur. This type of
reporting system will also allow applicants and patentees to indicate
that the information the Office has on file is accurate at future
checkpoints, such as at the time of maintenance fee payments.
As with other procedural requirements of the Office, this proposal
provides an applicant or patent owner with a means to correct omissions
and
[[Page 4107]]
errors in the attributable owner information that has been reported.
The notice also proposes to excuse good faith failures to notify the
Office of the attributable owner or to provide correct or complete
attributable owner information.
The Office proposes to make the proposed rules applicable to all
applications filed on or after the effective date of the final rule.
For already-filed, pending applications, the Office proposes to require
the reporting of attributable owner or owners when the issue fee is due
(if and when such application has been allowed) provided that the
notice of allowance is mailed on or after the effective date of the
final rule. For already-issued patents, the Office proposes to require
the reporting of attributable owner or owners when the next maintenance
fee is paid, if the payment occurs on or after the effective date of
the final rule. For any trial proceeding in which the petition was
filed on or after the effective date of the final rule and any
supplemental examination or ex parte reexamination in which the request
was filed on or after the effective date of the final rule, the Office
proposes to require the reporting of attributable owner or owners. The
effective date of the final rule would be at least thirty days after
publication of the final rule.
While the Office would use attributable owner information for
examination purposes in both published and unpublished applications,
attributable owner information would be made available to the public
for an application that has been published or issued as a patent.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: On June 4, 2013, the White House Task Force on High-
Tech Patent Issues 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.'' Fact Sheet: White House Task Force on High-Tech Patent
Issues, Legislative Priorities & Executive Actions. The first of the
five executive actions calls for the Office to ``begin a rulemaking
process to require patent applicants and owners to regularly update
ownership information when they are involved in proceedings before the
[Office], specifically designating the `ultimate parent entity' in
control of the patent or application.'' Id.
With this notice of proposed rulemaking, the Office is proposing
changes designed to increase transparency by collecting ownership
information of not just the titleholder (e.g., assignee), but also
entities that are real-parties-in-interest because of their right to
enforce an issued patent, as well as information about the entities who
ultimately control these entities (i.e., the ``ultimate parent
entities''). The proposed rule is designed to collect information both
during the application process and at certain times after a patent
issues, and thus will affect both patent applicants and holders of
issued patents.
Before the White House initiatives were announced on June 4, 2013,
the Office had begun the process of considering whether and how to
collect assignment or real-party-in-interest information (referred to
herein as the ``attributable owner'') with a request for comments in
2011 and a roundtable held at the Office in January 2013. Request for
Comments on Eliciting More Complete Patent Assignment Information, 76
FR 72372 (Nov. 23, 2011) (2011 Request for Comments); Notice of
Roundtable on Proposed Requirements for Recordation of Real Party-in-
Interest Information Throughout Application Pendency and Patent Term,
77 FR 70385 (Nov. 26, 2012) (2012 Roundtable Notice). The 2012
Roundtable Notice reiterated that the Office was considering
promulgating regulations that would require reporting of real-party-in-
interest information during the application process and at certain
times post-issuance and invited further public input. The Roundtable,
which was open to any member of the public, was held on Friday, January
11, 2013. Details on the comments received from organizations and
individuals can be found at http://www.uspto.gov/ip/officechiefecon/roundtable_01-11-2013.jsp.
As set forth in the Roundtable Notice, having accurate and up-to-
date attributable owner information will facilitate patent examination
and other parts of the Office's internal processes. As courts have
previously recognized, the Office 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.
To this end, the Office seeks attributable owner information to
ensure that a ``power of attorney'' is current in each application or
each patent involved in a proceeding before the Office. The Office has
a clear interest in ensuring that current representatives in any
proceeding before the Office are authorized by the current owner of the
application or patent. 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, the Leahy-Smith America Invents Act, Public Law
112-29 (2011) (``AIA'') amended 35 U.S.C. 118 to provide that an
application for patent may be filed by the assignee or person to whom
the inventor is under an obligation to assign the invention. See Public
Law 112-29, 125 Stat. 283, 296 (2011).
In addition, it is important for the Office to know the
attributable owner of each application or each patent involved in a
proceeding before the Office in order to avoid potential conflicts of
interest for Office personnel. This problem has been identified during
the adoption of regulations for the PTAB. 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.'' 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
PTAB, ``[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)). Office employees are also subject to executive branch
regulations that govern conflicts of interest in certain cases where
employees have threshold financial interests in matters before them.
See 5 CFR 2640.202(a); see also 18 U.S.C. 208. Accordingly, a clear
identification of the attributable owner is important to ensure that
officials are able to recuse themselves.
There are recent trends towards greater liquidity in the markets
for patent-related intellectual property. See, e.g., U.S. Dept. of
Justice & Fed. Trade Comm'n, The Evolving IP Marketplace: Aligning
Patent Notice and Remedies
[[Page 4108]]
with Competition, at 37-39 (2011) (``FTC Report'') (discussing the
increasing importance of technology transfer from small, specialized
firms to manufacturing firms and from large companies to spin-offs).
Thus, the Office has a corresponding need for more regular ownership
reporting and updating requirements for the Office's internal function.
In particular, having such accurate and up-to-date attributable owner
information will help the Office determine whether current
representatives in any proceeding before the Office are authorized by
the current applicant or owner. Likewise, having such attributable
owner information will facilitate the Office's efforts to ensure that
applicable conflict-of-interest provisions for Office personnel are
followed.
Facilitating greater transparency of patent application and patent
ownership is also an important part of the Office's ongoing efforts to
modernize patent examination and to improve patent quality. Recent
changes in title 35 under the AIA have expanded the role of ownership
as part of determining what constitutes prior art. See 35 U.S.C.
102(b). In particular, 35 U.S.C. 102(b)(2)(C) (2011) 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.'' 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.
35 U.S.C. 102(b)(2)(C) (2011) differs from the previous statutory
provision on which it was based (pre-AIA 35 U.S.C. 103(c)(1)). While
pre-AIA 35 U.S.C. 103(c)(1) concerned an exception to obviousness
rather than an exception to what constitutes prior art, it otherwise
recited virtually identical language to that of the 35 U.S.C.
102(b)(2)(C) (2011), except that pre-AIA 35 U.S.C. 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 pre-AIA 35 U.S.C. 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 35 U.S.C. 102(b)(2)(C) (2011), 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 35
U.S.C. 102(a)(2) (2011).
In the prosecution context, 35 U.S.C. 102(b)(2)(C) (2011) presents
the possibility that a greater amount of prior art might be subject to
this exemption than under pre-AIA 35 U.S.C. 103(c)(1), which, in turn,
could render the current method of handling the possibility of common
ownership under MPEP 706.02(l)(2) (the examiner presenting an initial
rejection, and the applicant rebutting the rejection with proof of
ownership) inefficient in a manner contrary to the principles of
compact prosecution as explained in MPEP 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.''). Accordingly, tracking attributable owner information
for patent applications and issued patents is directly relevant to
questions of whether a claimed invention is patentable over the prior
art during prosecution.
Moreover, the availability of new types of third-party proceedings
that may be filed with the Office, including inter partes review under
35 U.S.C. 311 et seq. and post-grant review under 35 U.S.C. 321 et
seq., has created a need for the Office to collect and publish timely
ownership information. Because of certain statutory deadlines imposing
short time frames for action (e.g., nine months after patent grant (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 litigation between patent owners and third parties that would
provide for discovery of such information. As discussed previously,
ownership information may be relevant in determining the scope of prior
art. Accordingly, providing accurate and up-to-date ownership
information to the public is important to facilitate these post-
issuance proceedings. In addition, requiring updated ownership
information during post-issuance proceedings will facilitate
examination for the same reasons discussed previously for examination
of applications.
Accordingly, having updated ownership information would allow the
Office to: (1) 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; (2) 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
(3) verify that a bona fide patent owner is making the request for
supplemental examination, as required by 35 U.S.C. 257(a).
Finally, because the Office publishes information it possesses
related to an application or patent (subject to 35 U.S.C. 122), the
Office has an interest in ensuring that such information is not
misleading. The Office currently receives (and publishes) only
assignment information that is voluntarily submitted by the applicant
or patent owner. There is no requirement that changes in assignment
information be updated, though current law protects against certain
types of fraud if such updating occurs. See 35 U.S.C. 261. Consequently
the information the Office has on file may be outdated, which may be
misleading to the public. Ensuring that the Office can provide
information to the public that is not misleading 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''); 10(a)(4) (providing for publication of
information, including ``annual indexes of . . . patentees''); 10(b)
(allowing the Director to publish the specified information set forth
in [item (4)] of subsection 35 U.S.C. 10(a) of this section in a
publication format ``desirable for the use of the Office'') and 41(i)
(creating a duty to provide access to information electronically).
Beyond providing these benefits to the Office, collecting
attributable owner information and making it publicly available may
have other potential benefits. In particular, collecting attributable
owner information and making it publicly available may: (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
[[Page 4109]]
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 patent or patent applications; and (4) level the playing field for
innovators.
Regarding enhanced competition and increased incentives to
innovate, easier access to accurate and up-to-date attributable owner
information will provide innovators with information to better
understand the competitive environment in which they operate. This will
enable them to better assess, for example, the risks and benefits of
developing a new business in a different area of technology, thereby
allowing them to allocate their limited research and development
resources more judiciously. Chapters 1 and 2 of the FTC Report discuss
at length the advantages of ex-ante versus ex-post licensing. By
providing the public with more and better information about ownership
of patent rights earlier (particularly in advance of product launch and
filling of distribution channels), innovators will be better positioned
to seek rights ex-ante rather than ex-post, should they so desire.
Regarding enhancing technology transfer and reducing the costs of
transactions for patent rights, providing easy access to accurate and
up-to-date attributable owner information to the public is expected to
reduce information and search costs associated with identifying and
then licensing or buying patent assets.
With regard to reducing abusive patent litigation, developing a
record of attributable owners will help accused patent infringers
identify: (i) The parties who control and/or influence the ability to
enter into a settlement agreement or licensing arrangement; and (ii)
the full range of patent rights held by the attributable owners so that
a license to all desired rights may be taken at once. This point is
also reflected in the White House's Fact Sheet: White House Task Force
on High-Tech Patent Issues, Legislative Priorities & Executive Actions
(June 4, 2013), which notes that certain patent enforcement entities
``set up shell companies to hide their activities'' and this ``tactic
prevents those facing litigation from knowing the full extent of the
patents that their adversaries hold.'' Accord, United States Government
Accountability Office, Intellectual Property: Assessing Factors That
Affect Patent Infringement Litigation Could Help Improve Patent
Quality, available at http://www.gao.gov/products/GAO-13-465 (2013)
(reporting that patent holders sometimes ``intentionally hide the
existence of their patents until a sector or company are using the
patented invention without authorization and can be sued for
infringement,'' and in some lawsuits, ``the identity of interested
operating companies is intentionally hidden.'' (pp. 20, 31)).
Furthermore, providing the public with access to updated attributable
owner information may help accused infringers determine whether a
patent or application may be subject to fair, reasonable, and non-
discriminatory (FRAND) licensing commitments.
Request for Comments on the Voluntary Submission of Licensing
Information: The Office is also seeking public comment on enabling
patent applicants and owners to voluntarily report licensing offers and
related information for the Office to make available to the public. The
Office currently permits patent owners to request that their patents be
listed in the Official Gazette as available for license or sale, upon
payment of the fee set forth in 37 CFR 1.21(i). See MPEP 1703. For
examples of such listings, see (http://www.uspto.gov/web/offices/com/sol/og/2012/week02/TOC.htm#ref18) (Jan. 10, 2012) and (http://www.uspto.gov/web/offices/com/sol/og/patlics.htm) (Dec. 11, 2007). The
Office seeks public comment on whether the Office should also, or
alternatively, permit patent applicants and owners to voluntarily
provide information about licensing for the Office to make available to
the public in, for example, a searchable online database or Public
PAIR. Such licensing information could include willingness to license,
as well as licensing contacts, license offer terms, or commitments to
license the patent, e.g., on royalty-free or reasonable and non-
discriminatory terms. In accordance with best practices in technology
transfer, this information could also include permitting a patent
applicant or owner to include keywords, technical fields, and/or
descriptive information about the underlying technology, related
technical papers and publications, and desired attributes in a
technology partner (see, e.g. http://www.federallabs.org/).
The Office believes that the implementation of such a voluntary
program would further enhance the transparency and efficiency of the
marketplace for patent rights by providing a clearinghouse for patent
holders to post licensing terms. Such a system would be expected to
further enhance technology transfer and reduce the costs of
transactions for patent rights. The World Intellectual Property
Organization (WIPO) has offered a similar option to report licensing
terms and information to PCT applicants since January 2012, in order to
promote voluntary licensing. In November 2013, it introduced the WIPO
GREEN online marketplace, to promote innovation and diffusion of green
technologies. (https://webaccess.wipo.int/green/).
Attributable Owner Information To Be Collected: The Office is
proposing that the attributable owner be identified on filing (or
shortly thereafter), when there is a change of attributable owner
during the pendency of an application, at the time of issue fee and
maintenance fee payments, and when a patent is involved in supplemental
examination, ex parte reexamination, or a trial proceeding before the
Patent Trial and Appeal Board (PTAB). The Office proposes to collect
two basic types of attributable owner information: (1) Titleholders and
(2) enforcement entities. The attributable owner would also include the
ultimate parent entity as defined in 16 CFR 801.1(a)(3) of either of
these two types of attributable owner. In addition, any entity that
creates or uses any type of arrangement or device with the purpose or
effect of temporarily divesting such entity of attributable ownership
or preventing the vesting of such attributable ownership would also be
considered an attributable owner. Each of the attributable owner types
and corresponding ``ultimate parent entity'' are discussed in greater
detail as follows.
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
[[Page 4110]]
correct entities, as dictated by business needs.
The Office proposes to collect this attributable owner information
from applicants and patent owners, and invites public comments as to
whether and when additional attributable owner information should be
collected as well as whether changes could be made to the scope of the
information proposed to be collected while still achieving the
objectives of the Office set forth in this document.
The Office is proposing to require disclosure of the following
ownership interests:
1. Titleholders: The first type of attributable owner information
the Office proposes to collect is comprised of the titleholder(s) of
the patent application or issued patent. Titleholders are defined as an
entity that has been assigned title to the patent or application. This
proposed requirement overlaps with the information that applicant and
patent owners currently may voluntarily submit for assignment
recordation at the Office. Reporting of exclusive licensees might be
required in the limited circumstances where the exclusive license
transfers so many rights that it is effectively an assignment, but the
Office expects that exclusive licensee information would more routinely
be reported under the second type of ownership information the Office
proposes to collect (entities that have standing to enforce). See,
e.g., Alfred C. Mann Found. v. Cochlear Corp., 604 F.3d 1354, 1360-61
(Fed. Cir. 2010).
2. Enforcement Entities: The second type of attributable owner
information the Office proposes to collect is comprised of those
entities not already 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. The entities
having the legal right to enforce the patent refers to those parties
that would be necessary and sufficient to bring a legal infringement
action. See Vaupel Textilmaschinen KG v. Meccanica EuroItalia SPA, 944
F.2d 870, 875-76 (Fed. Cir. 1991). This proposed reporting requirement
would require disclosure of exclusive licensees in certain cases.
Ultimate Parent Entities: Information required to be reported for
each type of attributable owner would also include identification of
the ultimate parent entity, i.e., the entity that ultimately controls
the actions of any entities discussed previously, if they are not their
own ultimate parents. The term ``ultimate parent entity'' is defined by
reference to the definition (an entity which is not controlled by any
other entity) along with the accompanying examples set forth in 16 CFR
801.1(a)(3). The Office is proposing incorporation by reference of the
definition of ultimate parent entity in 16 CFR 801.1(a)(3) but would
welcome comments on how this definition might be modified for use at
the Office. The Office recognizes that corporations sometimes transfers
patents and patent applications within the corporation for legitimate
reasons, such as tax savings purposes, and also welcomes comments on
the impact of the proposed changes on this practice.
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. The Office seeks to have a complete picture of the
attributable owners for the numerous reasons detailed in this document,
and this provision is designed to discourage intentional shielding of
such ownership interests.
As discussed previously, the Office expects that this information
will facilitate the Office's core function of examining patents. All of
the ownership interests outlined previously will help the Office to
avoid potential conflicts of interest, as required by regulation and
statute, and the quasi-judicial roles of patent examiners. For example,
the attributable owner information would allow Office employees to
evaluate whether they own stock in companies that are appearing before
them in patent examination or other Office proceedings. The related
ultimate parent entity information would serve as an additional check
to the extent that Office employees might not be aware of subsidiaries
owned by companies in which they might own stock.
Information about the titleholder and its ultimate parent entity
will also help the Office to determine the scope of prior art under the
common ownership exception under 35 U.S.C. 102(b)(2)(C), to uncover
instances of double patenting, and ensure that the power of attorney is
current in applications under examination. The ultimate parent entity
information in particular would facilitate searching by providing a
common identifier for companies that have many subsidiaries that
nominally hold title to the application or patent.
The Office plans to publish information about attributable owners
in accordance with its duty to provide information to the public, 35
U.S.C. 2(a)(2), although such information will be made available only
in accordance with 35 U.S.C. 122. The Office expects that the public
provision of attributable owner information will increase transparency
of the patent system, as outlined in the background section of this
document.
The Office is proposing the following timing and handling of
disclosures:
Timing of Attributable Owner Information Collection: For the
purposes discussed previously, the Office proposes to collect
information at the following points during prosecution and post-
issuance so that the Office will have access to accurate and up-to-date
information and will be able to provide such information to the public.
During Patent Prosecution: The Office proposes the following
attributable owner reporting requirements for pending applications: (1)
Application Filing Requirement: The applicant would be required to
identify the attributable owner at the time a patent application is
initially filed (or shortly thereafter); (2) Update Requirement: The
applicant would be required to identify a new attributable owner during
prosecution within three months of any change in attributable owner;
and (3) Issue Fee Payment Requirement: The applicant would be required
to identify the attributable owner (or verify that the attributable
owner information currently on record at the Office is correct) at the
time of issue fee payment. The requirement to identify the attributable
owner would not apply to provisional applications, and would not apply
to international applications prior to the commencement of the national
stage in the United States. The Office welcomes comments on whether
there are other times during prosecution (e.g., with each reply to an
Office action) where updating or verification of attributable owner
information should be required, and on whether within three months of
any change in attributable owner is the appropriate time frame (i.e.,
should the time frame be more or less than three months?).
After Patent Issuance: The Office proposes the following
attributable owner reporting requirements for issued patents: (1)
Maintenance Fee Requirement: The patent owner would be required to
identify the attributable owner (or verify that the attributable owner
information currently on record at the Office is correct) at the time
each maintenance fee is paid; and (2) Post-Issuance Proceeding
Requirement: The patent owner would be required to identify the
attributable owner (or verify
[[Page 4111]]
that the attributable owner information currently on record at the
Office is correct) at the time the patent becomes involved in certain
post-issuance proceedings before the Office, including (1) any trial
proceeding before the PTAB, such as any post grant review under 35
U.S.C. 321, inter partes review under 35 U.S.C. 311, covered business
method patent review under section 18 of the AIA, or derivation
proceeding under 35 U.S.C 135; (2) any request for supplemental
examination under 35 U.S.C. 257(a); and (3) any ex parte reexamination
proceeding under 35 U.S.C. 302.
Provision of Attributable Owner Information to the Public: While
the Office would use attributable owner information for examination
purposes in both published and unpublished applications, attributable
owner information would be made available to the public in an
application that has been published under 35 U.S.C. 122(b) or issued as
a patent under 35 U.S.C. 151. The Office anticipates providing
information about the current attributable owner, as well as a history
of any attributable owner changes, in an accessible electronic format,
such as via the public side of the Patent Application Information
Retrieval (PAIR) system.
Discussion of Specific Rules
The following is a discussion of proposed amendments to title 37 of
the Code of Federal Regulations, Part 1:
Section 1.17: Section 1.17(g) is proposed to be amended to include
a reference to proposed Sec. Sec. 1.279 and 1.387. Sections 1.279 and
1.387 as proposed provide for a petition and the petition fee set forth
in Sec. 1.17(g) if the applicant or patent owner has failed to notify
the Office of a change to the attributable owner, or has indicated an
incorrect or an incomplete attributable owner, despite a good faith
effort to comply with these requirements.
Section 1.271: Section 1.271 as proposed defines the entity or
entities that are covered by the term ``attributable owner'' as that
term is used in the rules of practice. Section 1.271(a) as proposed
specifically provides that the attributable owner includes each of the
following entities: (1) An entity that, exclusively or jointly, has
been assigned title to the patent or application (proposed Sec.
1.271(a)(1)); and (2) an entity necessary to be joined in a lawsuit in
order to have standing to enforce the patent or any patent resulting
from the application (proposed Sec. 1.271(a)(2)).
Section 1.271(b) as proposed provides that the attributable owner
of a patent or application includes the ultimate parent entity as
defined in 16 CFR 801.1(a)(3) of an entity described in Sec. 1.271(a).
The ultimate parent entity is an entity which is not controlled by any
other entity. 16 CFR 801.1(a) provides the following illustrative
examples for identifying the ultimate parent entity: ``(1) If
corporation A holds one hundred percent of the stock of subsidiary B,
and B holds seventy-five percent of the stock of its subsidiary C,
corporation A is the ultimate parent entity, since it controls
subsidiary B directly and subsidiary C indirectly, and since it is the
entity within the person which is not controlled by any other entity;
(2) if corporation A is controlled by natural person D, natural person
D is the ultimate parent entity; and (3) if P and Q are the ultimate
parent entities within persons `P' and `Q,' and P and Q each own fifty
percent of the voting securities of R, then P and Q are both ultimate
parents of R, and R is part of both persons `P' and `Q.' ''
With regard to the definition of ``ultimate parent entity'' as ``an
entity which is not controlled by any other entity,'' 16 CFR 801.1(b)
defines ``control'' as follows: The term control (as used in the terms
control(s), controlling, controlled by and under common control with)
means: (1) Either (i) holding fifty percent or more of the outstanding
voting securities of an issuer, or (ii) in the case of an
unincorporated entity, having the right to fifty percent or more of the
profits of the entity, or having the right in the event of dissolution
to fifty percent or more of the assets of the entity; or (2) having the
contractual power presently to designate fifty percent or more of the
directors of a for-profit or not-for-profit corporation, or in the case
of trusts that are irrevocable and/or in which the settlor does not
retain a reversionary interest, the trustees of such a trust. 16 CFR
801.1(b) further provides a number of illustrative examples for
identifying the ultimate parent entity based upon its definition of
``control.''
Section 1.271(c) as proposed provides that any entity that,
directly or indirectly, creates or uses a trust, proxy, power of
attorney, pooling arrangement, or any other contract, arrangement, or
device with the purpose or effect of temporarily divesting such entity
of attributable ownership of a patent or application, or preventing the
vesting of such attributable ownership of a patent or application,
shall also be deemed for the purpose of Sec. 1.271 to be an
attributable owner of such patent or application.
Section 1.271(d) as proposed defines the term ``entity'' used in
Sec. 1.271. Section 1.271(d) as proposed specifically provides that
the term ``entity'' used in Sec. 1.271 includes: (1) Any natural
person, corporation, company, partnership, joint venture, association,
joint-stock company, trust, estate of a deceased natural person,
foundation, fund, or institution, whether incorporated or not, wherever
located and of whatever citizenship (proposed Sec. 1.271(d)(1)); (2)
any receiver, trustee in bankruptcy or similar official or any
liquidating agent for any of the entities described in Sec.
1.271(d)(1), in his or her capacity as such (proposed Sec.
1.271(d)(2)); (3) a joint venture or other corporation which has not
been formed but the acquisition of the voting securities or other
interest in which, if already formed, would be an attributable owner as
described in this section (proposed Sec. 1.271(d)(3)); or (4) any
other organization or corporate form not specifically listed in Sec.
1.271(d)(1), (d)(2), or (d)(3) that holds an interest in an application
or patent (proposed Sec. 1.271(d)(4)). Section 1.271(d) as proposed
(in combination with the exception in proposed Sec. 1.271(e)) tracks
the definition of entity in 16 CFR 801.1(a)(2).
Section 1.271(e) as proposed provides an ``exception'' to the term
``entity'' as used in Sec. 1.271. Section 1.271(e) as proposed
specifically provides that, notwithstanding the provisions of Sec.
1.271(c), the term ``entity'' does not include any foreign state,
foreign government, or agency thereof (other than a corporation or
unincorporated entity engaged in commerce), and also does not include
the United States, any of the States thereof, or any political
subdivision or agency of either (other than a corporation or
unincorporated entity engaged in commerce).
Section 1.271(f) as proposed sets out the information concerning an
entity that must be provided when that entity is being identified as an
attributable owner. Section 1.271(f) as proposed specifically provides
that when there is a requirement to identify the attributable owner,
each entity constituting the attributable owner must be identified as
follows: (1) The identification of a public company must include the
name of the company, stock symbol, and stock exchange where the company
is listed (proposed Sec. 1.271(f)(1)); (2) the identification of a
non-public company must include the name of the company, place of
incorporation, and address of the principal place of business (proposed
Sec. 1.271(f)(2)); (3) the identification of a partnership must
include the name of the partnership and address of the principal place
of business (proposed Sec. 1.271(f)(3)); (4) the identification of a
[[Page 4112]]
natural person must include the full legal name, residence, and a
correspondence address (proposed Sec. 1.271(f)(4)); and (5) the
identification of any other type of entity must include its name, if
organized under the laws of a state, the name of that state and legal
form of organization, and address of the principal place of business
(proposed Sec. 1.271(f)(5)).
Section 1.271(g) is proposed to clarify that a shareholder or
partner in a corporate form, partnership, or other association (except
for shareholders of a public company) must also be identified as an
attributable owner if the shareholder or partner meets one of the
definitions set forth in Sec. 1.271(a), (b), or (c), even if the a
corporate form, partnership, or other association is separately
identified as an attributable owner.
Section 1.273: Section 1.273 as proposed requires the applicant to
identify the attributable owner (the ``initial'' attributable owner) on
filing or within the time period provided in Sec. 1.53(f) (provides
for the completion of an application under 35 U.S.C. 111(a) for
examination) or Sec. 1.495(c) (provides for the submission of missing
requirements in an international application that commenced the
national stage under 35 U.S.C. 371). Section 1.273 as proposed
specifically provides that the attributable owner must be identified in
each application under 35 U.S.C. 111(a), including a reissue
application, and in each international application that commenced the
national stage under 35 U.S.C. 371(b) or (f). The requirements of
proposed Sec. 1.273 would not apply to provisional applications under
35 U.S.C. 111(b), and would not apply to international applications
prior to the commencement of the national stage under 35 U.S.C. 371(b)
or (f). Section 1.273 as proposed also provides that if an application
under 35 U.S.C. 111(a) which has been accorded a filing date pursuant
to Sec. 1.53(b) or (d) does not identify the attributable owner, or if
an international application which complies with Sec. 1.495(b) does
not identify the attributable owner, the applicant will be notified and
given a period of time within which to file a notice identifying the
attributable owner to avoid abandonment. Section 1.273 as proposed also
provides that the notice by the Office under Sec. 1.273 may be
combined with a notice under Sec. 1.53(f) (providing for the
completion of an application under 35 U.S.C. 111(a) for examination) or
Sec. 1.495(c) (providing for the filing of missing requirements in an
international application that commenced the national stage under 35
U.S.C. 371). Thus, the applicant must identify the attributable owner
on filing or in reply to a notice setting a time period within which
the attributable owner must be identified. The Office generally issues
a notice under Sec. 1.53(f) (if necessary) within one to two months of
the filing date of an application and sets a two-month time period for
an applicant to comply with the requirements in the notice under Sec.
1.53(f). The two-month time period for an applicant to comply with the
requirements in the notice under Sec. 1.53(f) may be extended under
Sec. 1.136(a) by up to five months. Thus, this process would permit an
applicant up to eight months from the filing date of an application to
provide the attributable ownership information. The failure to identify
the attributable owner within the time period set under Sec. 1.273
would result in abandonment of the application. An applicant would be
able to revive an application abandoned for failure to identify the
attributable owner within the time period set under Sec. 1.273 under
the provisions of Sec. 1.137, provided that the failure to identify
the attributable owner was unintentional.
The Office is proposing making this requirement applicable to
applications under 35 U.S.C. 111(a) filed on or after the effective
date of the final rule and to international applications that commenced
the national stage under 35 U.S.C. 371(b) or (f) on or after the
effective date of the final rule.
Section 1.275: Section 1.275 as proposed addresses the procedure to
be followed if there is a change in attributable owner during the
pendency of an application under 35 U.S.C. 111(a) or the pendency of an
international application which complies with Sec. 1.495(b). The
requirements of proposed Sec. 1.275 would not apply to provisional
applications under 35 U.S.C. 111(b), and would not apply to
international applications prior to the commencement of the national
stage under 35 U.S.C. 371(b) or (f). Section 1.275 as proposed
specifically provides that if there is such a change during the
pendency of an application, the applicant has three months (non-
extendable) from the date of the change to the attributable owner
within which to file a notice identifying the current attributable
owner.
The Office is proposing making this requirement applicable to
applications under 35 U.S.C. 111(a) filed on or after the effective
date of the final rule and to international applications that commenced
the national stage under 35 U.S.C. 371(b) or (f) on or after the
effective date of the final rule.
Section 1.277: Section 1.277 as proposed requires applicants to
confirm that attributable owner information on record at the Office is
accurate, or to provide updated information. Section 1.277 as proposed
specifically provides if a notice of allowance under Sec. 1.311 has
been sent to the applicant, and if the attributable owner information
on record at the Office is no longer correct, that the applicant must
file a notice identifying the current attributable owner within three
months (non-extendable) from the date of the mailing of the notice of
allowance. If the attributable owner information on record at the
Office is still correct, applicants can simply confirm that there have
been no changes. To this end, the Office plans to provide a checkbox on
the notice of allowance (PTOL-85b) (or checkbox via the electronic
filing system) so that if the information on record at the Office
remains correct, an applicant may simply check a box to so indicate.
The failure to either update or confirm within three months (non-
extendable) from the date of mailing of the notice of allowance would
result in abandonment of the application. An applicant would be able to
revive an application abandoned for failure to complete this action
under the provisions of Sec. 1.137, provided that the failure was
unintentional.
The Office is proposing making this requirement applicable to
applications in which a notice of allowance under 35 U.S.C. 151 and
1.311 is mailed on or after the effective date of the final rule.
Section 1.279: Section 1.279 as proposed provides for the situation
in which the applicant has failed to notify the Office of a change to
the attributable owner, or has indicated an incorrect or an incomplete
attributable owner, despite a good faith effort to comply with these
requirements. Section 1.279 as proposed specifically provides that if,
despite a good faith effort by the applicant to notify the Office of
the initial attributable owner, and of any changes to the attributable
owner, in the manner required by Sec. Sec. 1.273, 1.275, and 1.277,
the failure or error may be excused in a pending application on
petition accompanied by a showing of reason for the delay, error, or
incompleteness and the petition fee set forth in Sec. 1.17(g).
Section 1.279 as proposed is limited to excusing failure or errors
in a pending application. Where there has been a failure to identify
the attributable owner within the time period set under Sec. 1.273, or
after mailing the notice of allowance, a failure either to confirm that
the information on file at the Office is correct, or to identify the
current
[[Page 4113]]
attributable owner within three months (non-extendable) from the date
of mailing under Sec. 1.277, that has resulted in abandonment of an
application, the applicant's remedy (if the failure was unintentional)
is by way of a petition to revive the abandoned application under the
provisions of Sec. 1.137.
Section 1.381: Section 1.381 as proposed provides for a patent
holder to either: (1) Identify the current attributable owner prior to
each maintenance fee payment; or (2) confirm prior to each maintenance
fee payment that there has been no change to the attributable owner
information most recently provided to the Office. Section 1.381 as
proposed specifically provides that a notice identifying the current
attributable owner must be filed within the period specified in Sec.
1.362(d) or (e), but prior to the date the maintenance fee is paid, for
each maintenance fee. Section 1.381 as proposed does not require that
the notice be provided concurrently with the maintenance fee payment as
the Office appreciates that maintenance fee payments are often provided
as bulk payments in an automated fashion by a third party. Rather,
Sec. 1.381 as proposed provides a considerable ``window'' (within the
six-month payment window in Sec. 1.362(d) or the six-month surcharge
window in Sec. 1.362(e), but prior to the date the maintenance fee is
paid) within which a notice identifying the current attributable owner
must be provided. The Office welcomes comments on how to collect
attributable owner information at the time of each maintenance fee,
particularly in light of this practice of maintenance fee submission in
bulk by third parties.
Section 1.381 as proposed also provides that if there has been no
change to the attributable owner information most recently provided to
the Office, the notice may simply indicate that there has been no
change. The Office plans to provide a means (automated or a pre-printed
form) such that if the current attributable owner has been previously
provided to the Office, the patent owner may simply check the box or
submit a pre-printed form to indicate that there has been no change to
the attributable owner. Thus, a patent owner who provides updated
attributable owner information whenever there is a change to the
attributable owner during the life of the patent may simply check the
box or submit a pre-printed form to indicate that that there has been
no change to the attributable owner.
The Office is proposing making this requirement applicable to
patents in which a maintenance fee is paid on or after the effective
date of the final rule.
Section 1.383: Section 1.383 as proposed requires the patent holder
to identify the current attributable owner for any patents involved in
a PTAB trial proceeding. Section 1.383 as proposed specifically
provides that the mandatory notice filed by a patent owner as required
by Sec. 42.8(a)(2) must also be accompanied by a notice identifying
the current attributable owner. Section 42.8 requires that the
petitioner and the patent owner each file a notice identifying (inter
alia) each real party in interest owner for the party. See Sec.
42.8(b)(1). Proposed Sec. 1.383 differs from the current requirement
in Sec. 42.8 to identify each real party in interest in that proposed
Sec. 1.383: (1) Requires identification of each attributable owner
(defined in Sec. 1.271), rather than real party in interest; and (2)
applies only to a patent owner. Section 1.383 as proposed further
provides that if there is a change to the attributable owner during the
pendency of the trial, the patent owner has twenty-one days (non-
extendable) from the date of the change within which to file a notice
identifying the current attributable owner. Section 1.383 provides a
twenty-one-day period, rather than a three-month period, for updating
any changes in attributable owners for a patent involved in a PTAB
proceeding because Sec. 42.8 requires that a notice must be filed with
the Board within twenty-one days of a change in the information that is
required to be in the mandatory notice. See 42.8(a)(3).
The Office is proposing making this requirement applicable to any
trial proceeding in which the petition was filed on or after the
effective date of the final rule.
Section 1.385: Section 1.385 as proposed requires a patent holder
to identify the current attributable owner in a request for
supplemental examination and during ex parte reexamination proceedings.
Section 1.385(a) as proposed pertains to supplemental examination.
Section 1.385(a) as proposed provides that a request for supplemental
examination under Sec. 1.610 must also be accompanied by a notice
identifying the current attributable owner. Thus, a request for
supplemental examination would not be accorded a filing date unless it
is accompanied by a notice identifying the current attributable owner.
A request for supplemental examination may be filed only by the patent
owner and a supplemental examination proceeding will not last longer
than three months (35 U.S.C. 257(a)). Therefore, there are no
provisions for a request for supplemental examination by a party other
than the patent owner or for a change to the attributable owner during
a supplemental examination.
Section 1.385(b) as proposed pertains to a request for ex parte
reexamination by the patent holder. Section 1.385(b) as proposed
specifically provides that a request for ex parte reexamination under
Sec. 1.510 by the patent holder must also be accompanied by a notice
identifying the current attributable owner. Thus, a request for ex
parte reexamination by the patent owner would not be accorded a filing
date unless it is accompanied by a notice identifying the current
attributable owner.
Section 1.385(c) as proposed pertains to a request for ex parte
reexamination in which the patent owner has not identified the current
attributable owner because the request was filed by a third party
rather than the patent holder. Section 1.385(c) as proposed
specifically provides that a reply or any other paper filed by the
patent holder in an ex parte reexamination proceeding must be
accompanied by a notice identifying the current attributable owner,
unless such a notice has previously been filed by the patent holder.
Thus, a reply by the patent holder in an ex parte reexamination would
be considered incomplete unless it is accompanied by a notice
identifying the current attributable owner, or unless such a notice has
previously been filed. The phrase ``unless such a notice has previously
been filed by the patent owner'' covers the situations in which: (1)
The request for ex parte reexamination was by the patent holder and the
patent holder identified the current attributable owner in the request
for ex parte reexamination; or (2) the current attributable owner was
identified in a previous reply by the patent holder. Section 1.385(c)
as proposed further provides that if there is a change to the
attributable owner during the pendency of the reexamination proceeding,
the patent holder has three months (non-extendable) from the date of
the change to the attributable owner within which to file a notice
identifying the current attributable owner.
The Office is proposing making this requirement applicable to any
supplemental examination or ex parte reexamination in which the request
was filed on or after the effective date of the final rule.
Section 1.387: Section 1.387 as proposed addresses the situation in
which the patent holder has failed to notify the Office of a change to
the attributable owner, or has indicated an incorrect or an incomplete
attributable
[[Page 4114]]
owner, despite a good faith effort to comply with these requirements.
Section 1.387 as proposed specifically provides that if, despite a good
faith effort by the patent holder to notify the Office of the initial
attributable owner, and of any changes to the attributable owner, in
the manner required by Sec. Sec. 1.273, 1.275, 1.277, 1.381, 1.383,
and 1.385, the failure or error may be excused on petition accompanied
by a showing of reason for the delay, error, or incompleteness and the
petition fee set forth in Sec. 1.17(g). Thus, proposed Sec. 1.387
would be the applicable provision for corrections in an issued patent,
regardless of whether the failure or error occurred during the
application process (i.e., there was a failure to comply with
Sec. Sec. 1.273, 1.275, or 1.277) or after the patent issued (i.e.,
there was a failure to comply with Sec. Sec. 1.381, 1.383, and 1.385).
Rulemaking Considerations
A. Administrative Procedure Act
This document proposes to require that the attributable owner,
including the ultimate parent entity, be identified during the pendency
of a patent application and at specified times during the life of a
patent. The changes in this rulemaking do not change the substantive
criteria of patentability and also do not place any limits or
conditions on the patent owner's ability to transfer ownership of, or
any other interest in, a patent or patent application. Therefore, the
changes proposed in this rulemaking involve rules of agency practice
and procedure, and/or interpretive rules. See Bachow Commc'ns Inc. v.
F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an
application process are procedural under the Administrative Procedure
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (rules for handling appeals were procedural where they did not
change the substantive standard for reviewing claims).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs, 536 F.3d at 1336-37 (Fed. Cir. 2008) (stating that 5
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and
comment rulemaking for ``interpretative rules, general statements of
policy, or rules of agency organization, procedure, or practice'')
(quoting 5 U.S.C. 553(b)(A)). The Office, however, is publishing all of
these proposed changes as it seeks the benefit of the public's views on
the Office's proposed implementation.
B. Initial Regulatory Flexibility Analysis
1. Description of the Reasons That Action By the Agency Is Being
Considered
The Office is proposing to amend the rules of patent practice to
provide greater transparency concerning the ownership of pending patent
applications and patents. The purpose of this rulemaking is to ensure
the highest-quality patents, to facilitate patent examination at the
Office, to 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, enhance
technology transfer and reduce the costs of transactions for patent
rights by making patent ownership information more readily and easily
available, to reduce risk of abusive patent litigation by helping the
public defend itself against risk of abusive assertions by providing
more information about the parties that have an interest in patents or
patent applications, and to level the playing field for innovators.
2. Succinct Statement of the Objectives of, and Legal Basis for, the
Proposed Rules
The objective of the proposed rules is to provide greater
transparency concerning the ownership of pending patent applications
and patents to facilitate patent examination at the Office by requiring
that the attributable owner, including the ultimate parent entity, be
identified during the pendency of a patent application and at specified
times during the life of a patent, and to further ensure that the
ownership information the Office provides to the public is accurate and
not misleading.
The proposed changes to require patent applicants and patent owners
to regularly update ownership information when the applicant or patent
owner is involved in a proceeding before the Office will facilitate
patent examination and other parts of the Office's internal processes
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.
Beyond providing these benefits to the Office, collecting
attributable owner information and making it available may: (1) Enhance
competition and increase incentives to innovate by providing innovators
with information to 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)
help the public defend itself against abusive patent assertion or
litigation by providing more information about all the parties that
have an interest in the patent or patent application; and (4) level the
playing field for innovators.
The legal basis for the proposed rules is 35 U.S.C. 2(b)(2), which
authorizes the Office to establish regulations, not inconsistent with
law, which ``govern the conduct of proceedings in the Office.'' 35
U.S.C. 2(a)(2)(A); see also Star Fruits S.N.C., 393 F.3d at 1282
(quoting 35 U.S.C. 2(b)(2)), and Cooper Techs., 536 F.3d at 1335 (``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 attributable owner 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.
Further legal basis for the proposed rule comes from 35 U.S.C.
2(a). Because the Office publishes information it possesses related to
an application or patent (subject to 35 U.S.C. 122), the Office has an
interest in ensuring that such information is not misleading. The
Office currently receives (and publishes) only assignment information
that is voluntarily submitted by the applicant or patent owner. There
is currently no requirement that changes in assignment information be
updated, though current law protects against certain types of fraud if
such updating occurs. See 35 U.S.C. 261. Consequently, the information
the Office has on file may be outdated, which may be misleading to the
public. Ensuring that the Office can provide information to the public
that is not misleading 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
[[Page 4115]]
information with respect to patents''); 10(a)(4) (providing for
publication of information, including ``annual indexes of . . .
patentees''); 10(b) (allowing the Director to publish the specified
information set forth in item (4) of subsection 35 U.S.C. 10(a) of this
section in a publication format ``desirable for the use of the
Office'') and 41(i) (creating a duty to provide access to information
electronically).
3. Description and Estimate of the Number of Affected Small Entities
A. Size Standard and Description of Entities Affected. The Small
Business Administration (SBA) small business size standards applicable
to most analyses conducted to comply with the Regulatory Flexibility
Act are set forth in 13 CFR 121.201. These regulations generally define
small businesses as those with fewer than a specified maximum number of
employees or less than a specified level of annual receipts for the
entity's industrial sector or North American Industry Classification
System (NAICS) code. As provided by the Regulatory Flexibility Act, and
after consultation with the Small Business Administration, the Office
formally adopted an alternate size standard as the size standard for
the purpose of conducting an analysis or making a certification under
the Regulatory Flexibility Act for patent-related regulations. See
Business Size Standard for Purposes of United States Patent and
Trademark Office Regulatory Flexibility Analysis for Patent-Related
Regulations, 71 FR 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60
(Dec. 12, 2006). This alternate small business size standard is SBA's
previously established size standard that identifies the criteria
entities must meet to be entitled to pay reduced patent fees. See 13
CFR 121.802. If patent applicants identify themselves on a patent
application as qualifying for reduced patent fees, the Office captures
this data in the Patent Application Location and Monitoring (PALM)
database system, which tracks information on each patent application
submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for the Office is not industry-specific.
Specifically, the Office's definition of small business concern for
Regulatory Flexibility Act purposes is a business or other concern
that: (1) Meets the SBA's definition of a ``business concern or
concern'' set forth in 13 CFR 121.105; and (2) meets the size standards
set forth in 13 CFR 121.802 for the purpose of paying reduced patent
fees, namely, an entity: (a) Whose number of employees, including
affiliates, does not exceed 500 persons; and (b) which has not
assigned, granted, conveyed, or licensed (and is under no obligation to
do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern which
would not qualify as a non-profit organization or a small business
concern under this definition. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR at 67112, 1313 Off. Gaz.
Pat. Office at 63.
B. Estimate of Number of Entities Affected. The proposed rules will
apply to all entities, including small or micro entity patent
applicants or patent owners, that: (1) File a patent application; (2)
change attributable owners during the pendency of a patent application;
(3) pay an issue fee in an allowed application; (4) pay a maintenance
fee for a patent; (5) file a request for supplemental examination under
35 U.S.C. 257(a); (6) file a request for ex parte reexamination under
35 U.S.C. 302; or (7) have a patent involved in a third-party requested
ex parte reexamination under 35 U.S.C. 302, or a trial proceeding
before the PTAB, such as any post grant review under 35 U.S.C. 321,
inter partes review under 35 U.S.C. 311, covered business method patent
review under section 18 of the AIA, or derivation proceeding under 35
U.S.C 135.
Based upon the information in the Office's PALM system, the Office
received approximately 437,000 new applications (including continuing
applications but not requests for continued examination) in fiscal year
2013, of which approximately 131,000 were by small or micro entity
applicants. Thus, the Office estimates that 437,000 patent applicants,
of which 131,000 are small or micro entities, will need to provide
attributable owner information each year due to the requirement to
identify the attributable owner at the time a patent application is
initially filed (or shortly thereafter).
Based upon the information in the Office's PALM system, there are
approximately 1,249,000 patent applications currently (in October of
2013) pending before the Office, of which 337,000 are by small or micro
entity applicants. Since the Office does not currently require
applicants and patent holders to disclose changes in the attributable
owner of an application or patent, the Office does not have information
on how often there is a change in attributable owner of an application
during the pendency of a patent application. The Office's assignment
records, however, indicate that about ninety-two percent of
applications have recorded assignment documents at the time of patent
grant, but fewer than four percent of applications have a second
recorded assignment document each year reflecting some type of
ownership transfer during the pendency of a patent application. The
high percentage of patent applicants who currently submit an assignment
document for recordation and the relatively low percentage of patent
applicants who submit a second assignment document for recordation
leads to the inference that changes in ownership during the pendency of
a patent application are relatively infrequent (e.g., changes in
ownership will occur in fewer than four percent of applications each
year). Thus, the Office estimates that 50,000 (four percent of
1,249,000, rounded up to the nearest thousand) patent applicants, of
which 14,000 (four percent of 337,000, rounded up to the nearest
thousand) are small or micro entities, will need to update attributable
owner information each year due to the requirement to update
attributable owner information when there is a change in ownership
during the pendency of a patent application.
Based upon the information in the Office's Revenue Accounting
Management (RAM) system, the Office received the following fee payments
in fiscal year 2013: (1) 296,481 issue fee payments (68,574 by small or
micro entity applicants); (2) 153,875 first stage maintenance fee
payments (27,076 by small or micro entity patent owners); (3) 99,249
second stage maintenance fee payments (16,692 by small or micro entity
patent owners); and (4) 75,470 third stage maintenance fee payments
(11,273 by small or micro entity patent owners). Thus, the Office
estimates that 297,000 (266,481 rounded up to the nearest thousand)
patent applicants, of which 69,000 (68,574 rounded up to the nearest
thousand) are small or micro entities, will need to update attributable
owner information each year due to the requirement to identify the
attributable owner (or verify that the current attributable owner has
been previously identified) at the time of issue fee payment, and the
Office estimates that 329,000 (153,875 plus 99,249 plus 75,470, rounded
up to the nearest thousand), of which 55,000 (27,076 plus 16,692 plus
11,273, rounded up to the nearest thousand) are small or micro
entities, will need to update attributable owner information each year
due to the requirement to identify the attributable owner (or verify
that the attributable
[[Page 4116]]
owner information currently on record at the Office is correct) at the
time each maintenance fee is paid.
Based upon the information from the Office's Central Reexamination
Unit, there are fewer than 800 requests for ex parte reexamination
filed each year. In addition, the Office's assignment records show that
fewer than three percent of the patents in force have a recorded
assignment document reflecting some type of ownership transfer during
the life of the patent, which leads to the inference that changes in
ownership during the life of a patent are relatively infrequent (e.g.,
changes in ownership will occur in fewer than three percent of
patents). Thus, the Office estimates that approximately 1,000 (800 plus
three percent of 800 (800 plus 24) rounded up to the nearest thousand)
patent owners will need to update attributable owner information each
year due to the requirement to identify the attributable owner (or
verify that the real party in interest information currently on record
at the Office is correct) in an ex parte reexamination proceeding or
when there is a change in ownership during an ex parte reexamination
proceeding.
The supplemental examination provisions have been enacted as part
of the AIA. The Office has received thirty-one requests for
supplemental examination since September 16, 2012, the effective date
of the supplemental examination provisions of the AIA. Thus, the Office
estimates that approximately 100 (31 rounded up to the nearest hundred)
patent owners will need to update attributable owner information each
year due to the requirement to identify the attributable owner (or
verify that the real party in interest information currently on record
at the Office is correct) at the time the patent owner files a request
for supplemental examination.
The PTAB trial provisions (post grant review under 35 U.S.C. 321,
inter partes review under 35 U.S.C. 311, covered business method patent
review under section 18 of the AIA, or derivation proceedings under 35
U.S.C 135) have been enacted as part of the AIA. The Office received
563 petitions for a PTAB trial proceeding during fiscal year 2013, but
received between eighty and one hundred petitions for a PTAB trial
proceeding during each of August, September, and October of 2013. Thus,
the Office estimates that approximately 2,000 (100 per month multiplied
by 12 months (1,200) plus three percent of 1200 (1,200 plus 360),
rounded up to the nearest thousand) patent owners will need to update
attributable owner information each year based upon the filing of a
petition for a PTAB trial proceeding.
Summary of Number of Entities Affected: Based upon the foregoing,
the Office estimates that: (1) 437,000 (131,000 small or micro entity)
patent applicants will need to provide attributable owner information
each year due to the requirement to identify the attributable owner at
the time a patent application is initially filed (or shortly
thereafter); (2) 50,000 (14,000 small or micro entity) patent
applicants will need to update attributable owner information each year
due to the requirement to update attributable owner information when
there is a change in ownership during the pendency of a patent
application; (3) 297,000 (69,000 small or micro entity) patent
applicants will need to update attributable owner information each year
due to the requirement to identify the attributable owner (or verify
that the current attributable owner information on record at the Office
is correct) at the time of issue fee payment; (4) 329,000 (55,000 small
or micro entity) patent owners will need to update attributable owner
information each year due to the requirement to identify the
attributable owner (or verify that the attributable owner information
currently on record at the Office is correct) at the time each
maintenance fee is paid; (5) 1,000 patent owners will need to update
attributable owner information each year due to the requirement to
identify the attributable owner (or verify that the real party in
interest information currently on record at the Office is correct) in
an ex parte reexamination proceeding, or the requirement to identify
the attributable owner when there is a change in ownership during an ex
parte reexamination proceeding; (6) 100 patent owners will need to
update attributable owner information each year due to the requirement
to identify the attributable owner (or verify that the attributable
owner information currently on record at the Office is correct) at the
time the patent owner files a request for supplemental examination; and
(7) 2,000 patent owners will need to update attributable owner
information each year due to the requirement to identify the
attributable owner (or verify that the attributable owner information
currently on record at the Office is correct) at the time the patent
becomes involved a PTAB post grant review, inter partes review, covered
business method patent review, derivation proceeding, or the
requirement to identify the attributable owner when there is a change
in ownership during a PTAB post grant review, inter partes review,
covered business method patent review, or derivation proceeding.
4. Description of the projected reporting, recordkeeping and other
compliance requirements of the proposed rules, including an estimate of
the classes of small entities which will be subject to the requirement
and the type of professional skills necessary for preparation of the
report or record: The proposed rules will apply to all entities,
including any small or micro entity patent applicant or patent holder,
that: (1) File a patent application; (2) change attributable owners
during the pendency of a patent application; (3) pay an issue fee in an
allowed application; (4) pay a maintenance fee for a patent; (5) file a
request for supplemental examination under 35 U.S.C. 257(a); (6) file a
request for ex parte reexamination under 35 U.S.C. 302; or (7) have a
patent involved in a third-party requested ex parte reexamination under
35 U.S.C. 302, or a trial proceeding before the PTAB, such as any post
grant review under 35 U.S.C. 321, inter partes review under 35 U.S.C.
311, covered business method patent review under section 18 of the AIA,
or derivation proceeding under 35 U.S.C 135.
A patent attorney or general practice attorney would have the type
of professional skills necessary for providing the attributable owner
information required by the proposed rules. As discussed previously,
the Office issued a request for comments in November of 2011 (Request
for Comments on Eliciting More Complete Patent Assignment Information,
76 FR at 72372 et seq.) and issued a notice of a roundtable and request
for comments in November of 2012 (Notice of Roundtable on Proposed
Requirements for Recordation of Real Party-in-Interest Information
Throughout Application Pendency and Patent Term, 77 FR at 70385 et
seq.). The Office received input at this roundtable, including the
suggestion that providing the attributable owner information might have
a transaction cost of $100, depending upon the inclusiveness of the
definition of attributable owner (which was discussed under the rubric
of ``real party in interest'' at the roundtable). It was also suggested
that the transaction could be less costly, and less frequently
incurred, because reporting would occur at times applicants were
already working with the application and would require ownership
information that was readily known and could be easily reported. As
described further below, given the Office's records concerning
assignment recordation and feedback at the roundtable, the Office
estimates that
[[Page 4117]]
in many instances, reporting ownership information in compliance with
this proposed rule will have negligible costs. Applicants or patentees
will often be reporting information readily known (e.g., that the
patent is owned by the inventor, or that the patent is owned by the
employer of the inventor to whom it has been assigned) and in many
instances will be providing this information at a time they are
otherwise interacting with the Office (e.g., upon application, upon
issue, during a post-grant proceeding). This seems likely to have a
minimal cost, and to require minimal time to report. Given the Office's
records suggesting that many applications do not have more than one
recorded assignment, in many instances applicants or patentees will
likely be merely confirming the ownership information is unchanged,
which should have a negligible cost.
As noted previously, the Office's assignment records indicate that
approximately ninety-two percent of patent applications have a recorded
assignment at the time of grant, and four percent of patent
applications have a second recorded assignment each year reflecting
some kind of ownership change. Approximately eight percent of
applications have no assignment transaction, and presumably are filed
by the original owners. This suggests that for most applications, there
would be a single reporting of attributable owner, with no changes
needed to be reported at later times. At subsequent instances when
reporting was required (e.g., upon issue), the owner would merely be
confirming that no change had occurred, which would have negligible
cost. The Office presumes that reporting costs for these applications
would be negligible, because the applicants would be indicating that
they are the attributable owners, providing the same information they
are providing elsewhere in the application. In summary, the Office
estimates that in many instances, when reporting is required under the
proposed rule, applicants or patentees will be providing information
that is readily known and available to them, and that can be provided
easily and at negligible cost during the application process, at grant,
or after grant. The Office estimates that in instances where the owner
of a large number of patents reports information in compliance with
this proposal, economies of scale would likely work to reduce the cost
of reporting (e.g., reporting ownership information at the same time).
The Office estimates that only a minority of instances would present
multiple transfers that would potentially require greater costs to meet
these reporting requirements. In a majority of instances, the Office
estimates that the costs to report would be minimal.
The Office welcomes comments from the public specifically on the
issue of estimating costs of compliance with the proposed rule,
including comments on possible transaction costs, frequencies of
reporting changes in information, and possible economies of scale in
reporting.
5. Description of any significant alternatives to the rules which
accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rules on small
entities: This analysis considered significant alternatives such as:
(1) The establishment of differing compliance or reporting requirements
or timetables that take into account the resources available to small
entities; (2) the clarification, consolidation, or simplification of
compliance and reporting requirements under the rule for such small
entities; (3) the use of performance rather than design standards; and
(4) an exemption from coverage of the rule, or any part thereof, for
such small entities. See 5 U.S.C. 603.
With respect to the proposed requirement for updating any changes
in attributable owners during the application process, the Office
considered requiring updated attributable owner information with each
reply to an Office action. The Office has instead proposed requiring
updating only if there is a change to the attributable owner during the
pendency of an application, with a single confirmation at the time of
issuance, to reduce the need for a periodic review of attributable
owner information.
With respect to the proposed requirement for updating any changes
in attributable owners after the patent is granted, the Office
considered requiring updating attributable owner information whenever
there was a post patent proceeding (e.g., with requests for a
certificate of correction under 35 U.S.C. 254 or 255, or requests to
correct inventorship under 35 U.S.C. 256).
With respect to differing compliance or reporting requirements or
timetables that take into account the resources available to small
entities, the Office considered requiring updating attributable owner
information at fewer instances during the pendency of an application
(e.g., only on filing and at allowance), but such a proposal would not
achieve the objection of having accurate and up-to-date ownership
information and providing greater public transparency concerning the
ownership of pending patent applications and patents. The proposed
rules minimize the ``periodic'' reporting requirement by permitting an
applicant or patent owner who updates attributable owner information
whenever there is a change in the attributable owner to simply confirm
that there has been no change to the attributable owner.
With respect to the clarification, consolidation, or simplification
of compliance and reporting requirements under the rule for such small
entities, the proposed rules track existing regulations overseen by the
Federal Trade Commission (e.g., the definition of ultimate parent
entity in 16 CFR 801.1(a)(3), and the definition of entity in 16 CFR
801.1(a)(2)) rather than creating new definitions, to minimize the need
for additional investigation and analysis of ownership structures. The
simplicity or complexity of the proposed definition of attributable
owner with respect to any particular application or patent is driven by
the simplicity or complexity of the ownership arrangement of the
particular application or patent, which is ultimately within the
control of the applicant or patent owner. Finally, as discussed
previously, the proposed rules minimize the reporting requirement by
permitting an applicant or patent owner who is facing a requirement to
identify attributable owner information to simply confirm that there
has been no change to the attributable owner.
With respect to an exemption from coverage of the rule, or any part
thereof, for such small entities, such an exemption would defeat the
objective of having accurate and up-to-date ownership information and
providing greater public transparency concerning the ownership of
pending patent applications and patents.
Finally, the proposed rules do not involve design standards.
6. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap or conflict with the
proposed rules: The Office is the sole agency of the United States
Government responsible for administering the provisions of title 35,
United States Code, pertaining to examination and granting patents.
Therefore, no other Federal, state, or local entity shares jurisdiction
over the examination and granting of patents.
Other countries, however, have their own patent laws, and an entity
desiring a patent in a particular country must make an application for
patent in that country, in accordance with the applicable law. Although
the potential for overlap exists internationally, this cannot be
avoided except by treaty
[[Page 4118]]
(such as the Paris Convention for the Protection of Industrial
Property, the Patent Law Treaty (PLT), or the Patent Cooperation Treaty
(PCT)). Nevertheless, the Office believes that there are no other
duplicative or overlapping rules.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
Government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), the United States Patent and Trademark Office
will submit a report containing any final rule resulting from this
rulemaking and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office.
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this document do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
This rulemaking proposes to require that patent applicants identify
the attributable owner or owners on filing of an application (or
shortly thereafter), within three months of any change in attributable
owner during the pendency of the application, and when the issue fee is
due for an application that has been allowed. This rulemaking also
proposes to require that patent holders identify the attributable owner
when a maintenance fee is due, and when a patent becomes involved in
certain post-issuance proceedings at the Office, including in
supplemental examination, ex parte reexamination, or a trial proceeding
before the PTAB. This rulemaking further proposes to provide that an
applicant or patent owner may correct a good faith failure to notify
the Office of a change to the attributable owner, or correct an
indication of an incorrect or an incomplete attributable owner, by
filing a petition accompanied by a showing of reason for the delay,
error, or incompleteness.
The collection of information that would be triggered by these
proposed requirements has been submitted to OMB under OMB control
number 0651-00xx. The proposed collection, containing the basis for the
following summary of the estimated annual reporting burdens, will be
available at OMB's Information Collection Review Web site:
www.reginfo.gov/public/do/PRAMain. The title, description and
respondent description of this information collection, with an estimate
of the annual reporting burdens, follows:
Title of Collection: Identification of Attributable Owner.
OMB Control Number: 0651-00xx.
Needs and Uses: This information collection is necessary in order
to provide the Office and the public with up-to-date information
concerning the attributable owner of a patent or patent application.
The Office will use the information collected to facilitate patent
examination and other parts of the Office's internal processes 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
[[Page 4119]]
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.
Method of Collection: By mail, facsimile, hand delivery, or
electronically to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Respondents: 1,116,300 responses per year.
Estimated Time per Response: The Office estimates that it will take
the public, on average, approximately 6 minutes (0.1 hour) to identify
the attributable owner in an application or patent and approximately 1
hour to correct a good faith failure to notify the Office of a change
to the attributable owner (or to correct a good faith but incorrect or
incomplete indication of attributable owner).
Estimated Total Annual Respondent Burden Hours: 111,810 hours per
year (1,116,100 responses times 0.1 hours plus 200 responses times 1
hour).
Estimated Total Annual (Hour) Respondent Cost Burden: $43,494,090
per year (111,810 hours times the $389/hour attorney rate suggested by
the AIPLA 2013 Economic Survey).
The Office is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the Office, including whether the
information will have practical utility; (2) evaluate the accuracy of
the Office's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Please send comments related to this proposed collection of
information under the Paperwork Reduction Act on or before March 25,
2014 to Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box
1450, Alexandria, VA, 22313-1450, marked to the attention of Raul
Tamayo, Senior Legal Advisor, Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy.
Comments should also be submitted to the Office of Information and
Regulatory Affairs, Office of Management and Budget, New Executive
Office Building, Room 10202, 725 17th Street NW., Washington, DC 20503,
Attention: Desk Officer for the United States Patent and Trademark
Office.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.17 is amended by revising paragraph (g) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(g) For filing a petition under one of the following sections which
refers to this paragraph:
By a micro entity (Sec. 1.29).............................. $50.00
By a small entity (Sec. 1.27(a))........................... $100.00
By other than a small or micro entity........................ $200.00
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.46--for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in the
matter.
Sec. 1.55(f)--for filing a belated certified copy of a foreign
application.
Sec. 1.59--for expungement of information.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.136(b)--for review of a request for extension of time when
the provisions of Sec. 1.136(a) are not available.
Sec. 1.279--for correction of attributable owner in a pending
application.
Sec. 1.377--for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.387--for correction of attributable owner in a patent.
Sec. 1.550(c)--for patent owner requests for extension of time in
ex parte reexamination proceedings.
Sec. 1.956--for patent owner requests for extension of time in
inter partes reexamination proceedings.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.
* * * * *
0
3. New undesignated center headings and new Sec. Sec. 1.271, 1.273,
1.275, 1.277, and 1.279 are added immediately after Sec. 1.251 to read
as follows:
Attributable Owner
Sec. 1.271 Attributable owner (Real-parties-in-interest for reporting
purposes).
(a) The attributable owner of a patent or application includes each
of the following entities:
(1) An entity that, exclusively or jointly, has been assigned title
to the patent or application; and
(2) An entity necessary to be joined in a lawsuit in order to have
standing to enforce the patent or any patent resulting from the
application.
(b) The attributable owner of a patent or application includes the
ultimate parent entity as defined in 16 CFR 801.1(a)(3) of an entity
described in paragraph (a) of this section.
(c) Any entity that, directly or indirectly, creates or uses a
trust, proxy, power of attorney, pooling arrangement, or any other
contract, arrangement, or device with the purpose or effect of
temporarily divesting such entity of attributable ownership of a patent
or application, or preventing the vesting of such attributable
ownership of a patent or application, shall also be deemed for the
purpose of this section to be an attributable owner of such patent or
application.
(d) The term ``entity'' used in this section includes:
(1) Any natural person, corporation, company, partnership, joint
venture, association, joint-stock company, trust, estate of a deceased
natural person, foundation, fund, or institution, whether incorporated
or not, wherever located and of whatever citizenship;
(2) Any receiver, trustee in bankruptcy or similar official or any
liquidating agent for any of the entities described in paragraph (d)(1)
of this section, in his or her capacity as such;
(3) Any joint venture or other corporation which has not been
formed but the acquisition of the voting securities or other interest
in which, if already formed, would be an attributable owner as
described in this section; or
(4) Any other organization or corporate form not specifically
listed in
[[Page 4120]]
paragraphs (d)(1), (d)(2), or (d)(3) of this section that holds an
interest in an application or patent.
(e) Notwithstanding the provisions of paragraph (d) of this
section, the term ``entity'' does not include any foreign state,
foreign government, or agency thereof (other than a corporation or
unincorporated entity engaged in commerce), and also does not include
the United States, any of the States thereof, or any political
subdivision or agency of either (other than a corporation or
unincorporated entity engaged in commerce).
(f) When there is a requirement to identify the attributable owner,
each entity constituting the attributable owner must be identified as
follows:
(1) The identification of a public company must include the name of
the company, stock symbol, and stock exchange where the company is
listed;
(2) The identification of a non-public company must include the
name of the company, place of incorporation, and address of the
principal place of business;
(3) The identification of a partnership must include the name of
the partnership and address of the principal place of business;
(4) The identification of a natural person must include the full
legal name, residence, and a correspondence address; and
(5) The identification of any other type of entity must include its
name, if organized under the laws of a state, the name of that state
and legal form of organization, and address of the principal place of
business.
(g) Except for shareholders of a public company, the presence of a
corporate form, partnership, or other association, does not preclude an
entity who may also be a shareholder or partner in such an identified
attributable owner from a requirement to be separately identified as an
attributable owner if the entity is also described in paragraph (a),
(b) or (c) of this section as an entity qualifying as an attributable
owner.
Identification of Attributable Owner in Pending Applications
Sec. 1.273 Initial identification of attributable owner in an
application.
The attributable owner as defined in Sec. 1.271 must be identified
in each application under 35 U.S.C. 111(a), including a reissue
application, and in each international application that commenced the
national stage under 35 U.S.C. 371(b) or (f). If an application under
35 U.S.C. 111(a) which has been accorded a filing date pursuant to
Sec. Sec. 1.53(b) or (d) does not identify the attributable owner as
defined in Sec. 1.271, or if an international application which
complies with Sec. 1.495(b) does not identify the attributable owner
as defined in Sec. 1.271, the applicant will be notified and given a
period of time within which to file a notice identifying the
attributable owner as defined in Sec. 1.271 to avoid abandonment. The
notice by the Office under this section may be combined with a notice
under Sec. 1.53(f) or Sec. 1.495(c).
Sec. 1.275 Maintaining current attributable owner during prosecution
of an application.
If there is a change to the attributable owner as defined in Sec.
1.271 during the pendency of an application under 35 U.S.C. 111(a) or
the pendency of an international application which complies with Sec.
1.495(b), the applicant has three months from the date of the change to
the attributable owner within which to file a notice identifying the
current attributable owner as defined in Sec. 1.271. This three-month
period is not extendable.
Sec. 1.277 Identifying current attributable owner at allowance.
If a notice of allowance under Sec. 1.311 has been sent to the
applicant, the applicant must file a notice identifying the current
attributable owner as defined in Sec. 1.271 within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. This three-month period is not extendable. If there
has been no change to the attributable owner as defined in Sec. 1.271
that was most recently provided to the Office, the notice may simply
indicate that there has been no change to the attributable owner as
defined in Sec. 1.271 most recently provided to the Office.
Sec. 1.279 Correction of failure to notify the Office of a change to
the attributable owner and errors in notice of attributable owner in a
pending application.
If, despite a good faith effort by the applicant to notify the
Office of the initial attributable owner as defined in Sec. 1.271, and
of any changes to the attributable owner as defined in Sec. 1.271, in
the manner required by Sec. Sec. 1.273, 1.275, and 1.277, the
applicant has failed to notify the Office of a change to the
attributable owner or has indicated an incorrect or an incomplete
attributable owner, the failure or error may be excused in a pending
application on petition accompanied by a showing of reason for the
delay, error, or incompleteness, and the petition fee set forth in
Sec. 1.17(g).
0
4. A new undesignated center heading and new Sec. Sec. 1.381, 1.383,
1.385, and 1.387 are added immediately after Sec. 1.378 to read as
follows:
Identification of Attributable Owner in Patents Involved in Proceedings
Before the Office
Sec. 1.381 Identifying current attributable owner with maintenance
fee payment.
A notice identifying the current attributable owner as defined in
Sec. 1.271 must be filed within the period specified in Sec. 1.362(d)
or (e), but prior to the date the maintenance fee is paid, for each
maintenance fee payment. If there has been no change to the
attributable owner as defined in Sec. 1.271 most recently provided to
the Office, the notice may simply indicate that there has been no
change to the attributable owner as defined in Sec. 1.271 that was
most recently provided to the Office.
Sec. 1.383 Identifying attributable owner in patents involved in
Patent Trial and Appeal Board Trial Proceedings.
The mandatory notice filed by a patent owner as required by Sec.
42.8(a)(2) of this chapter must also be accompanied by a notice
identifying the current attributable owner as defined in Sec. 1.271.
If there is a change to the attributable owner as defined in Sec.
1.271 during the pendency of the trial proceeding, the patent owner has
twenty-one days from the date of the change to the attributable owner
within which to file a notice identifying the current attributable
owner as defined in Sec. 1.271. This twenty-one-day period is not
extendable.
Sec. 1.385 Identifying attributable owner in patents involved in
supplemental examination and reexamination proceedings.
(a) A request for supplemental examination under Sec. 1.610 must
also be accompanied by a notice identifying the current attributable
owner as defined in Sec. 1.271.
(b) A request for ex parte reexamination under Sec. 1.510 by the
patent owner must also be accompanied by a notice identifying the
current attributable owner as defined in Sec. 1.271.
(c) A reply or any other paper filed by the patent owner in an ex
parte reexamination proceeding must be accompanied by a notice
identifying the current attributable owner as defined in Sec. 1.271,
unless such a notice has previously been filed by the patent owner. If
there is a change to the attributable owner as defined in Sec. 1.271
during the pendency of the reexamination proceeding, the patent owner
has three months from the date of the change to the attributable owner
within which to file a notice identifying
[[Page 4121]]
the current attributable owner as defined in Sec. 1.271. This three-
month period is not extendable.
Sec. 1.387 Correction of failure to notify the Office of a change to
the attributable owner and errors in notice of attributable owner in a
patent.
If, despite a good faith effort by the patent owner to notify the
Office of the initial attributable owner as defined in Sec. 1.271, and
of any changes to the attributable owner as defined in Sec. 1.271, in
the manner required by Sec. Sec. 1.273, 1.275, 1.277, 1.381, 1.383,
and 1.385, the patent owner has failed to notify the Office of a change
to the attributable owner or has indicated an incorrect or an
incomplete attributable owner, the failure or error may be excused on
petition accompanied by a showing of reason for the delay, error, or
incompleteness, and the petition fee set forth in Sec. 1.17(g).
Dated: January 16, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-01195 Filed 1-23-14; 8:45 am]
BILLING CODE 3510-16-P