The Federal Register Notice promulgating the proposed Attributable Owner rules offers some lofty justifications for the rules. Because the rules have been promulgated pursuant to a White House initiative, they are likely to take effect in some form, but applicants and stakeholders should not miss the opportunity to submit comments and suggestions to the USPTO in an effort to make the final rules less onerous.
The Proposed Onerous Definition of Attributable Owner
The USPTO has proposed to impose an ongoing requirement to disclose all “attributable owners” of a pending application or granted patent, defining “attributable owner” as follows:
§ 1.271 Attributable owner (Real-parties-in-interest for reporting purposes).
The USPTO Justifications for the Attributable Owner Rules
(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.
As a federal agency subject to the Administrative Procedures Act, the USPTO has to justify its needs for information required from the public. The Federal Register Notice states that the information required under the proposed Attributable Owner rules will facilitate patent examination and other parts of the Office’s internal processes by helping to:
[e]nsure that a ‘‘power of attorney’’ is current in each application or proceeding before the Office;
avoid potential conflicts of interest for Office personnel;
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;
verify that the party making a request for a post-issuance proceeding is a proper party for the proceeding; and
ensure that the information the Office provides to the public concerning published applications and issued patents is accurate and not misleading.
I am not familiar with current USPTO practices for avoiding examiner conflicts of interest, so I will focus on justifications (1), (3), (4) and (5).
Verifying Power of Attorney
The current USPTO rules on power of attorney documents would have to change significantly before the USPTO would need to know every possible “attributable owner” to ensure that a current power of attorney is in place. Under 37 CFR § 1.34, a registered practitioner can prosecute a patent application without ever filing any formal power of attorney document. While a power of attorney is needed to support certain papers (such as an express abandonment or terminal disclaimer), most patent applications can be filed, prosecuted, allowed, and granted without a power of attorney document.
When a power of attorney document is filed, the USPTO verifies that the power of attorney is consistent with the applicant and/or ownership information of record, but does not investigate whether the applicant and/or ownership information of record is correct, or whether the person who executed the power of attorney document had the authority to do so. (These circumstances typically are verified by the practitioner or applicant/owner in a Rule 3.73 Statement.)
Even if the USPTO did verify ownership, it is not likely that any “attributable owner” beyond the named titleholder (assignee) would have authority to file or prosecute a patent application, except possibly an exclusive licensee. However, not all exclusive license agreements give the exclusive licensee a right to prosecute. Thus, even knowing that a patent application has been exclusively licensed and to whom would not be sufficient to identify the party with the right to control prosecution.
Perhaps most frustratingly, the USPTO’s “power of attorney” justification ignores the fact that the current power of attorney requirements for applications filed on or after September 16, 2012 are inconsistent with a goal of ensuring that power of attorney is consistent with ownership. The USPTO power of attorney rule, 37 CFR § 1.32(b)(4), requires that the power of attorney originate from the applicant(s). However, the USPTO rule that defines who may be named as the applicant, 37 CFR § 1.32(b)(4), permits the inventors to be named as applicant(s) even if they have assigned all of their rights in the application. Thus, the USPTO power of attorney rules in effect require power of attorney from people who no longer have any ownership rights.
How can the USPTO demand even more “ownership” information to allegedly support the power of attorney requirement, when its current rules require power of attorney documents that are inconsistent with ownership?
Identifying Commonly Owned Prior Art and Double Patenting
The most substantive justification for the proposed Attributable Owner rules relates to the relevance of patent ownership to the prior art exception of 35 U.S.C. § 102(b)(2)(C) and double patenting. However, the Federal Register Notice does not explain how the more onerous attributable owner disclosure requirements that go beyond requiring disclosure of the titleholder would be relevant to either § 102(b)(2)(C) or double patenting.
Moreover, under the USPTO’s rules implementing the AIA version of § 102, the applicant will bear the burden of establishing the applicability of 35 U.S.C. § 102(b)(2)(C). That is, under 37 § CFR 1.131, an examiner will cite prior art without regard to the exception, and the applicant will have to establish that the common ownership exception applies. Thus, requiring all applicants to provide ownership information at the outset is not necessary for implementation of § 102(b)(2)(C).
For double patenting, most double patenting issues arise between related applications/patents or applications/patents with overlapping inventorship, where ownership information may not be necessary to support double patenting. Moreover, an applicant already has a duty to disclose ownership information and/or commonly owned applications/patents if material to patentability.
Parties Requesting Post-Issuance Proceedings
The Inter Partes Review and Post Grant Review statutes already require the petitioners to identify the real-party-in-interest (35 USC §§ 312(a)(2), 322(a)(2)). These are proceedings against a patent, how could requiring more information on patent ownership help “verify that the party making a request for a post-issuance proceeding is a proper party for the proceeding”?
The Supplemental Examination statute permits a “patent owner” to request Supplemental Examination, and 37 CFR § 1.601(a) already provides that “[a] request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest in the patent.” How could information regarding possible “attributable owners” beyond the titleholder(s) help ensure compliance with this rule?
Improving the Accuracy of Public Information
The final justification offered in the Federal Register Notice is to help “ensure that the information the Office provides to the public concerning published applications and issued patents is accurate and not misleading.” This justification might be more credible if it weren’t so difficult for the public to obtain the ownership information that the USPTO already has.
The USPTO website has a searchable database of patent assignment information, but that database is maintained separately from the electronic file wrapper system and from the published application/patent databases. Patent assignment information only can be searched by patent number or publication number, not application number. Further, an assignment is indexed in accordance with the information provided at the time of recordation. An assignment that by its own terms applies to continuation and divisional applications may not be indexed to those applications (or resulting patents) unless the assignment is re-recorded under those application/patent numbers. On the other hand, an application or patent will be published with ownership information provided on the Application Data Sheet or Issue Fee Transmittal, regardless of whether that information is consistent with any recorded ownership information.
Before the USPTO demands more onerous ownership information, it should make it easier for the public to obtain the most current ownership information that the USPTO already has.
A Less Onerous Solution?
The fact that the USPTO defines “attributable owner” with reference to parties who may have the right to enforce a patent shows that any need for such information pertains more to patent litigation than patent examination. It seems that the USPTO would have all of the information that it could need for examination by requiring applicants to disclose titleholder (assignee) information.
How to Submit Public Comments
The USPTO will consider written comments received by April 24, 2014. Comments may be provided
by email addressed to AC90.firstname.lastname@example.org
by postal mail addressed to:
Mail Stop Comments-Patents
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450
Attention: James Engel, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy
via the Federal eRulemaking Portal
Stakeholders and practitioners are encouraged to study the proposed rules and provide written comments to the USPTO.