[Federal Register Volume 79, Number 34 (Thursday, February 20, 2014)]
[Proposed Rules]
[Pages 9677-9678]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-03629]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0004]
Notice of Public Hearings and Extension of Comment Period on the
Proposed Changes To Require Identification of Attributable Owner
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public hearings and extension of comment period.
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SUMMARY: The United States Patent and Trademark Office (Office)
published a notice on January 24, 2014, proposing changes to the rules
of practice 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, and
seeking written comments on the proposed changes. This initiative is
one of a number of executive actions issued by the Administration that
are designed to ensure issuance of the highest-quality patents, enhance
competition by providing the public with more complete information
about the competitive environment in which innovators operate, improve
market efficiency 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
conducting two public hearings to discuss these proposed changes. The
public hearings are an additional way for the Office to introduce the
proposed changes and directly receive feedback from the public. The
Office also is extending the period for public comment on the proposed
changes until April 24, 2014, to provide interested members of the
public with additional time to submit written comments.
DATES: Public Hearing Dates: The first public hearing will take place
on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m.
EDT, in Alexandria, Virginia.
The second public hearing will take place on March 26, 2014, from 9
a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco,
California.
Requests to Provide Oral Testimony: Those wishing to provide oral
testimony at either public hearing must submit a request to do so in
writing no later than February 28, 2014. Members of the public who wish
to attend solely to observe need not submit a request to attend.
Comment Deadline Date: To be ensured of consideration, written
comments on the proposed changes to the rules of practice to require
identification of the attributable owner must be received on or before
April 24, 2014.
ADDRESSES: Public Hearings: The first public hearing will take place
at: Madison Auditorium North, Concourse Level, United States Patent and
Trademark Office Headquarters, 600 Dulany Street, Alexandria, Virginia
22314.
The second public hearing will take place at: the University of
California Hastings College of the Law, Louis B. Mayer Lounge, 198
McAllister Street, San Francisco, California 94102.
Requests to Provide Oral Testimony: Requests to provide oral
testimony at either public hearing must be sent by electronic mail
message over the Internet addressed to: [email protected].
Comments: Comments should be sent by electronic mail message over
the Internet addressed to: [email protected]. Comments also may
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 likewise may 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
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 in plain text are preferred, but
comments in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format are also acceptable. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
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: The Office recently published a notice of
proposed rulemaking proposing to require the disclosure of ownership
information about patents and applications and requesting comments
about the voluntary reporting of licensing offers and commitments and
making them
[[Page 9678]]
available online. See Changes to Require Identification of Attributable
Owner, 79 FR 4105 (Jan. 24, 2014). The Office is conducting two public
hearings to discuss these proposed changes and receive feedback from
the public. The Office also is extending the period for public comment
on the proposed changes until April 24, 2014, to provide interested
members of the public with additional time to submit written comments.
Members of the public who wish to provide oral testimony at either
public hearing must submit a timely request (i.e., must submit a
request to provide oral testimony no later than February 28, 2014).
Requests to provide oral testimony at either public hearing must
indicate the following information: (1) The name of the person desiring
to speak; (2) the person's contact information (telephone number and
electronic mail address); (3) the organization(s) the person
represents, if any; and (4) the hearing location where the person
prefers to speak. A person must be physically present at the hearing
location to provide oral testimony; virtual testimony via telephone or
webcast is not available. Based on the requests received, an agenda of
scheduled speakers will be sent to those speaking and posted on the
Office's Internet Web site at http://www.uspto.gov. The number of
speakers and time allotted to each speaker may be limited to ensure
that all persons speaking will have a meaningful chance to do so.
Members of the public who wish to attend solely to observe need not
submit a request to attend. The Office also plans to make the public
hearings available via Web cast. Web cast information will be available
on the Office's Internet Web site closer to the public hearing dates. A
transcript of the public hearings will be available for viewing via the
Office's Internet Web site at http://www.uspto.gov, and 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 22314, upon request.
The public is welcome to submit written comments in response to the
proposed changes in addition to, or lieu of, presenting oral testimony
at these public hearings. The Office is extending the period for public
comment on the proposed changes to provide interested members of the
public with additional time to submit written comments. Written
comments in response to the proposed changes must be received on or
before April 24, 2014.
Under the proposed rulemaking, the Office plans to collect
information on the ``attributable owner'' of a patent or application,
which includes the titleholders, entities with rights to enforce the
patent, and entities with effective control over anyone reported in the
first two categories, called the ``ultimate parent entities.'' This
information would be made available to the public under the proposed
rulemaking at the same time a patent application is published or when a
patent issues. The Office also seeks public comment on whether to
permit patent applicants and owners to voluntarily report licensing
offers and related information that the Office will 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, and the Office would like public input on whether the
Office should expand on this program to allow for the submission of
more licensing information and make this information available in an
accessible online format.
The Office welcomes comments on all aspects of the proposed
rulemaking, but highlights the following areas (which are also
highlighted in the notice of proposed rulemaking) for receipt of public
input:
(1) The proposal sets forth a definition for attributable owner.
The Office invites public comment on whether changes could be made to
the scope of the information proposed to be collected while still
achieving the objectives of the Office as set forth in the proposal.
(2) Part of the current proposed definition of attributable owner
incorporates by reference the definition of ultimate parent entity set
forth in 16 CFR 801.1(a)(3). The Office welcomes comments on how this
definition might be modified for use at the Office. The Office
recognizes that corporations sometimes transfer 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.
(3) The proposal sets forth when attributable owner information
must be supplied to the Office. The Office invites public comments as
to whether and when attributable owner information should be collected.
For example, are there additional times during prosecution (e.g., with
each reply to an Office action) when the applicant should be required
to update or verify attributable owner information? Is requiring
updates on changes during prosecution within three months of any change
in attributable owner the appropriate time frame (i.e., should the time
frame be more or less than three months?).
(4) The Office plans to work with its user community to implement
the attributable owner information reporting system in a user-friendly
manner and welcomes input on how this can best be accomplished. Subject
to financial and resource constraints, for example, the Office would
like to explore means to allow for the bulk processing of changes to
attributable owner for portfolios of applications and patents. The
Office also welcomes input on how the updating or verifying by the
applicant or owner should be structured in conjunction with the payment
of maintenance fees, particularly in light of the practice of
outsourcing payment of maintenance fees to third parties.
(5) The Office further seeks comments on whether the Office should
expand the current Official Gazette practice of allowing patent owners
to list patents as available for license or sale to permit all patent
applicants and owners to voluntarily report additional licensing
information for the Office to make available to the public in an
accessible online format. The Office welcomes input on what such
licensing information should include (i.e., willingness to license, as
well as licensing contacts, license offer terms, commitments to license
the patent, e.g., on royalty-free or reasonable and non-discriminatory
terms) and the interface of the online system.
Dated: February 12, 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. 2014-03629 Filed 2-19-14; 8:45 am]
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