The USPTO Frequently Asked Questions about Assignments has information on patent assignments.
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label assignments. Show all posts
Showing posts with label assignments. Show all posts
Sunday, October 19, 2014
Tuesday, February 4, 2014
USPTO - Proposed Rules Require Many Identifications of Attributable Owner To Avoid Abandonment of Application and Loss of US Patent?
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.
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.
Monday, December 23, 2013
Electronically Submitting Assignments - No Recording Fee Effective January 1, 2014
Today, I submitted an assignment for recordation in the USPTO. I used the electronic patent assignment system (EPAS) and waited until this week because the USPTO appeared to state it would no longer charge the $40 recording fee for assignments submitted electronically on or after December 18, 2013. However, at the end of the process the USPTO said a $40 recording fee was due. Because I had to meet the three-month deadline, I submitted a $40 payment. Later I re-read the USPTO fee schedule and noted what was trumpeted as a fee revision only pertained to fee codes not the amounts. I note this in case you also found the USPTO fee schedule less than clear.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, November 30, 2012
PTO Seeking Transparency in Patent Ownership Roundtable
The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
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