As a follow up to USPTO - Public Hearings on Proposed Attributable Ownership Rules, Professor Feldman of UC Hastings Law School sent a link to her written testimony on the proposed attributable ownership rules on March 26, 2014.
Professor Feldman persuasively argues why it is important to identify the parties to a transaction. As she puts it: "shell games and hide-and-seek rarely make for an efficiently functioning market." She also points out the asymmetry in discovery that allows patent trolls to assert patents and obtain nuisance settlements as part of why transparency is important.
I don't see a reasonable argument in favor of allowing parties to purposely cloak ownership. However, from my perspective as a patent attorney, the proposed rules to identify patent ownership numerous times would impose a burden on many patent owners. It may help solve an aspect of the patent troll problem, but at a significant cost. For example, a patent term running 20 years from the filing date can "out live" management of a tech company, the inventors, and the patent attorneys. Thus typical discontinuity that can occur multiply times during the patent term will impose an administrative burden to ensure ownership changes are promptly reported over the patent term. The time we need to know attributable ownership is when monetizing activity ensues (e.g., licensing negotiations or patent infringement suit filed or threatened).
It will be interesting to see if the USPTO modifies the proposed rules as they appear likely to raise patent prosecution costs for all and result in patent loss for what may be in many cases an inadvertent mistake.
Copyright © 2014 Robert Moll. All rights reserved.
