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

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.

(5)    In this blog post, we consider the last three request for comments, relating to possible regulation changes, namely: 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 CFR1.27(g)(2) was 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

In regard to what changes in regulation are likely to be necessary, if the purpose of the change in assignment practice is to provide proper notice to the public, such a change is not covered by any of the regulations in 37 CFR part 3.  If the public were to be provided a timely and accurate record of the changes in assignment from the time of allowance or grant forward, 37 CFR part 3 should be changed to provide rules allowing for providing a timely and accurate record of the changes in assignments.

In regards to whether 37 CFR1.27(g)(2) should be changed, 37 CFR 1.27 (g) (2) already imposes a duty on the practitioner and/or the applicants to notify the USPTO when a change of entity status occurs.  There appears to be no reason to modify 37 CFR 1.27 (g) (2).

In regards to providing an incentive for the disclosure of assignment information changes besides that negative incentive provided by 37 CFR 1.27 (g) (2), there are a number of possible ways of giving a financial incentive for discount if a change in assignment information is recorded.  The approach suggested in the request for comments, a discount in the maintenance fee payment, appears to be a workable one.

We look forward to how the USPTO implements the rule changes for assignments.  The USPTO should be lauded for proceeding according to the letter and spirit of the rule-making process.

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