White House Seeks to Promote Transparency Concerning Patent Ownership

by McDonnell Boehnen Hulbert & Berghoff LLP

Washington - White House #2Last week, the Obama Administration announced "major progress on a series of initiatives designed to combat patent trolls and further strengthen our patent system and foster innovation" (see "The White House Releases Update on 'Protecting American Inventors and Innovators'").  In addition to a number of executive actions discussed in our earlier report, the White House also announced delivery on its commitment of "Promoting Transparency" concerning patent ownership.  In particular, a White House Fact Sheet states that:

• Promoting Transparency — The United States Patent and Trademark Office (USPTO) recently published a draft rule to ensure patent owners accurately record and regularly update ownership information when they are involved in proceedings before the USPTO.  This effort is aimed at improving the quality of patents issued, enhancing competition, facilitating technology transfer, and making it harder to hide abusive litigation tactics behind shell companies.  After receiving input from the public, the USPTO aims to issue a final rule in the coming months.

The White House Fact Sheet can also be accessed from the USPTO homepage by clicking on the heading "Driving Innovation, Not Litigation"

USPTO SealThe draft rule discussed in the Administration's Fact Sheet, which was published as a notice of proposed rulemaking in the Federal Register (79 Fed. Reg. 4105) on January 24, would change the rules of practice to require that the "attributable owner" be identified at the time an application is filed (or shortly thereafter), during the pendency of an application when there is a change in the attributable owner (within three months of such change), at the time the issue fee is paid, when maintenance fee payments are made, and if a patent becomes involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board (see "USPTO Proposes Rules Changes to Require Identification in Applications and Patents of Attributable Owners" for more infoirmation regarding the proposed rules changes).  The Office indicated that comments on the notice of proposed rulemaking could be sent by e-mail to AC90.comments@uspto.gov, by regular 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, or via the Federal eRulemaking Portal, with the deadline for submitting comments initially set for March 25, 2014.

The link embedded in the White House Fact Sheet's paragraph on "Promoting Transparency" takes readers to a webpage on "Attributable Ownership" at the USPTO website (which as new USPTO webpages goes is far less controversial than the Office's "Beta" webpage entitled "Been Sued or Gotten a Demand Letter?  Answers To Common Questions About Abusive Patent Litigation," and in particular, certain links that can be found in the "Resources and Glossary" page; for more information, see our report on the Office's new "on-line toolkit").  The Attributable Ownership webpage provides a few interesting announcements.  First, the page indicates that the March 25 comment deadline has been extended to April 24, 2014.  The page also indicates that the two public meetings described in the notice of proposed rulemaking will be held on March 13 from 1:00 to 4:00 pm (ET) at the USPTO Madison Auditorium North in the Madison Building, 600 Dulany Street, Alexandria, VA 22314, and on March 26 from 9:00 am to 12:00 pm (PT) at the U.C. Hastings College of the Law, Louis B. Mayer Lounge, 198 McAllister Street, San Francisco, CA 94102.  Both meetings will be accessible via WebEx, with access information to be provided closer to the meeting dates.

WegnerWith respect to the White House's efforts to promote transparency concerning patent ownership, Hal Wegner (at right) stated in his e-mail newsletter on February 18 that while "attempts to minimize comment have involved suppression of existing comments as if this will perhaps lead to the public falling asleep at the comment switch," "the leadership of the Patent Office has been sheltered from questioning by the public, while the Administration’s lobbyist group, 'Business Forward', continues to have access to PTO leadership" (emphasis in original).  With respect to the Office's attempts to minimize comments on the proposed Attributable Ownership rules, Mr. Wegner noted that as of his e-mail above, no comments had been posted on the USPTO comments webpage.  As of this post, four comments have been posted in response to the notice of proposed rulemaking on Attributable Ownership, with one comment coming from a law firm and three comments coming from individuals.  With regard to the Office's meetings with the group Business Forward, Mr. Wegner noted that a closed door luncheon for selected members of the group and USPTO Deputy Director Michelle Lee had to be postponed as it was set to take place on the same day that the White House announced progress on its patent initiatives.  According to the Business Forward website:

Members include Aetna, American Airlines, AT&T, CIT, Citi, Comcast, Dow, Duke Energy, Fidelity, Ford, Hilton Worldwide, Intuit, Lockheed Martin, McDonald's, Microsoft, Qualcomm, Time Warner, Time Warner Cable, Verizon, Visa, and Walmart.

These corporations work with Business Forward to identify, recruit and brief small business owners, venture capitalists and entrepreneurs of all kinds who are looking for a meaningful way to participate in policy debates.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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