On January 24, 2014, the USPTO notified that it proposes to change the rules to identify the attributable owner on filing of an application (or soon after), whenever ownership of the application changes, when the issue fee and maintenance fees are paid, and when a patent is involved in supplemental examination, ex parte reexamination, and a trial before the Patent and Trial Board (PTAB).
A theme for all these requirements is it will increase transparency and reduce patent litigation abuse, but it is unclear how identifying the attributable owner multiple times during pendency of the application is necessary. Maybe it gives big tech a way to track and monitor third party patents.
It will increase the cost of prosecuting applications and maintaining patents and even result in abandonment of an application or lapse of U.S. patent whenever someone fails to identify the attributable owner to the USPTO within a non-extendable three months. Congress is the legislative body that has a process for ensuring we discuss whether the benefit of this ownership rules outweigh the cost of subjecting owners to loss of US patent rights.
The proposed rule also raises a question if these rules exceed the USPTO law making authority.
Under the proposed rules someone can lose a US patent even if it is not the subject of any licensing or litigation activity simply if they fail to update their ownership records within three month. If a patent is the subject of litigation, ownership must be stated in the complaint. To say you can petition if you have delayed in updating the records is insufficient, because the USPTO may decline to grant the petition. I wouldn't be surprised to see articulate comments opposing this proposal.
See the USPTO notice on the proposed rules: Changes to Require Identification of Attributable Owner.
Copyright © 2014 Robert Moll. All rights reserved.
