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While We Were Eating Turkey and Drinking Wassail II: The USPTO Proposed Rule Changes for Assignments

by Orlando Lopez

In one of the four notices that the USPTO issued in the Federal Register from November 22 through December 16, 2011, requests for comments were issued for proposed changes to the rules on patent assignments.  In this post, we continue providing comments in response to those requests.

The group of requests, including the second request through the fourth request reproduced below, relate to the requirement of information to be provided by the applicants:

2)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee at the time of allowance, e.g. in response to the Notice of Allowance?  Are there limitations on the USPTO’s rights and powers to require the reporting of such information?

3)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee during prosecution of the application?

4)      Would it be in the public interest for the USPTO to obtain from applicants, updated identification of the assignee after issue of the patent?   What are the appropriate consequences of non-compliance?

Because of the effect of information, the answer is different whether the information is provided after the notice of allowance or at the time of issue, during prosecution (before the patent is allowed), or after the patent has been issued.

Requiring reporting assignment information at the time of allowance, or preferably from the time of payment of the issue fee, could serve a public function of alerting the public as to who would be the damaged party if others made or used the patented invention.  Such notice would fall under the mandate of the USPTO to disseminate public information with respect to patents (see 35 USC 2).

On the other hand, obtaining updated identification of the assignee during prosecution can impose a burden on the small inventor since the assignee (typically the small inventor’s own company) could change during prosecution.  It is not atypical for small companies to dissolve and reform or change structure during the long time it takes today for patent prosecution.  There could also be no justification in the statute since, until the patent is granted, the claimed invention is not definite.  It would be harder to justify under the statute to disseminate the public information that is not significant.  Since the claims are not yet finalized, the claimed invention is not defined.  Therefore, the function of public notice is not served because the public does not know what claimed invention to avoid or invent around.

Obtaining from the applicants/patentees updated information of the assignee after issue of the patent and publishing that information in the Official Gazette, would serve the public since it would update the knowledge of the damaged party if others made or used the patented invention.  The assignment information could include the granting of exclusive licenses, which could give others besides the listed assignee the ability to sue.  Providing that information would definitely fall under the mandate of the USPTO to disseminate public information with respect to patents.  Such information, the update on the assignee and the listing of exclusive licensees (which is harder to obtain today), would be beneficial to the public.

Although we may not be able to influence the final decision, and some may consider this inquiry by the USPTO as an effort to update from small entity to large entity applications and thereby extract more fees, the present inquiry can also be viewed as the USPTO’s attempt to improve the performance of their duty to disseminate that information.  Viewed as the latter, such an attempt should be lauded.

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