USPTO Proposes Amendments to the Patent Rules of Practice Regarding Patent Ownership | Practical Law

USPTO Proposes Amendments to the Patent Rules of Practice Regarding Patent Ownership | Practical Law

The US Patent and Trademark Office (USPTO) has proposed changes to the patent rules of practice regarding the identification of the attributable owner of patents and patent applications.

USPTO Proposes Amendments to the Patent Rules of Practice Regarding Patent Ownership

Practical Law Legal Update 5-555-3465 (Approx. 3 pages)

USPTO Proposes Amendments to the Patent Rules of Practice Regarding Patent Ownership

by Practical Law Intellectual Property & Technology
Published on 23 Jan 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has proposed changes to the patent rules of practice regarding the identification of the attributable owner of patents and patent applications.
On January 24, 2014, the USPTO issued a notice of proposed rulemaking seeking to amend the patent rules of practice to require the identification of the attributable owner of a patent during the pendency of a patent application and at specified times during the patent's life (79 Fed. Reg. 4105-02 (January 24, 2014)).
In particular, the USPTO is proposing that the attributable owner, including the ultimate parent entity be identified:
  • When a patent application is filed, or shortly thereafter.
  • When there is a change in the attributable owner during the pendency of a patent application.
  • At the time of issue fee and maintenance fee payments.
  • When the patent is involved in:
    • supplemental examination;
    • ex parte reexamination; or
    • a trial proceeding before the Patent Trial and Appeal Board (PTAB).
The USPTO is also collecting comments on whether the USPTO should allow patent applicants and owners to voluntarily report licensing offers and related information, which the USPTO would then make publicly available online. This licensing information could include:
  • Willingness to license.
  • Licensing contacts.
  • License offer terms.
  • Commitments to license, including under:
    • royalty free; or
    • reasonable and non-discriminatory terms.
Interested parties may submit e-mail or written comments no later than March 25, 2014.
Update: The public comment period has been extended through April 24, 2014.
Update: The time for filing a request to testify at one of the public hearings has been extended to March 12, 2014.