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While We Were Eating Turkey and Drinking Wassail: The USPTO Federal Register Notices From Late November

by Orlando Lopez

The period from late November until the beginning of the new year presents challenges to those trying to keep up with his or her work and with the outside world while we  celebrate the holidays.  While we were eating turkey and drinking wassail from November 22 through December 16, 2011,  the USPTO issued four notices in the Federal Register.  These notices either notify of changes in the practice or ask for comments on proposed new rules.  In this post, we present the request for comments on proposed rules for assignments and we comment on the first request for comments.  We will also present our comments in response to the other request and then comment on the new rules for BPAI practice in later posts.

The Federal Register notice issued on November 23, 2011, which details the proposed rules for assignments, documents requests comments in the following areas (provided as listed in the Federal Register):

(1)    Is there any reason why the mandatory disclosure of any assignee or assignees should not take place at the time of application filing?

(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?

(5)     To accomplish adequate and timely recording, are changes to agency regulations necessary?  What are the most effective and appropriate means for the USPTO to provide the public with a timely and accurate record of the assignment of patent rights and the assignee?

(6)    Would it help the USPTO’s goal of collecting more updated assignment information if 37 CFR 1.27(g)(2) were amended to require identification of any new ownership rights that caused the application or issued patent to lose entitlement to small entity status?

(7)     Given the passage of the America Invents Act, is it proper for the USPTO to provide financial incentives for disclosure of assignment information by way of discounts in fee payments?

We look at the first request from the point of view of the small inventor who is starting a company.  Due to the long pendency of a patent application, by the time the application is allowed, in many instances the inventor has moved on to another venture.  The application could be useful in that second incarnation of the company because the entrepreneur is also typically the inventor, or one of the inventors.

Having the application assigned to the first venture, which is defunct by the time the application issues, will create unnecessary problems if the inventor has not taken funds from a third-party.  Creating these extra problems for an entrepreneur would not be in keeping with the spirit of the America Invents Act or with the constitutional basis for the patent system and the USPTO.  From the point of view of the small inventor starting a company, the proposed rules can result in “unnecessary roughness,” but the ombudsman is not a referee.  As one of my clients said recently, “It is getting so painful to apply for patents that I don’t know if I should bother.”  Since the proposed rule could result in more pain to the small inventor, we are inclined to object to its passage.

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