USPTO Seeks Comment on Potential Changes to Patent Assignment Process | Practical Law

USPTO Seeks Comment on Potential Changes to Patent Assignment Process | Practical Law

The USPTO is considering ways to build a more complete record of assigned applications and patents. The proposed changes would increase disclosure requirements at the time of filing the application, but the additional information would benefit the public, financial markets and patenting inventors and manufacturers.

USPTO Seeks Comment on Potential Changes to Patent Assignment Process

Practical Law Legal Update 1-516-9045 (Approx. 3 pages)

USPTO Seeks Comment on Potential Changes to Patent Assignment Process

by PLC Intellectual Property & Technology
Published on 16 Dec 2011 • USA (National/Federal)
The USPTO is considering ways to build a more complete record of assigned applications and patents. The proposed changes would increase disclosure requirements at the time of filing the application, but the additional information would benefit the public, financial markets and patenting inventors and manufacturers.
On November 23, 2011, the USPTO issued a request for comments on ways to elicit more complete patent assignment information both during patent prosecution and after the patent has issued. In an effort to build a more complete record of assigned applications and patents, the USPTO is considering regulations that would require notification to the USPTO of any change in the identity of an assignee throughout patent prosecution.
Specifically, new regulations would require:
  • Disclosure of any assignee at the time of filing the patent application.
  • Identification of assignment changes after the filing date for patent application publication.
  • That the application be issued in the name of the assignee as of the date of payment of the issue fee.
  • Notification of any new ownership rights that alter a patent's small entity status.
The regulation would also provide discounted maintenance fees if assignee information is updated at the time the fee is paid, or in a designated time thereafter.
The USPTO's goal is to provide more complete patent assignment data to the public. The regulation is designed to benefit:
  • The public, by providing a better understanding of the patent rights issued by the USPTO and held by various entities.
  • Financial markets, by providing more complete information about the valuable assets being generated and held by companies.
  • Patent inventors and manufacturers, by providing a better understanding of the environment they operate in so they can better allocate time and resources to be more able to obtain licenses.
The USPTO is accepting comments through January 23, 2012.