[Federal Register Volume 77, Number 227 (Monday, November 26, 2012)]
[Proposed Rules]
[Pages 70385-70389]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-28333]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 3
[Docket No. PTO-P-2012-0047]
Notice of Roundtable on Proposed Requirements for Recordation of
Real-Party-in-Interest Information Throughout Application Pendency and
Patent Term
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of public meeting; request for comments.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO) is
considering promulgating regulations that would require greater public
transparency concerning the ownership of patent applications and
patents by requiring the provision of real-party-in-interest
information during patent prosecution and at certain times post-
issuance. As part of this initiative, the USPTO is conducting a
roundtable to obtain public input from organizations and individuals on
how the USPTO could change its rules of practice to collect and provide
such ownership information and make it publicly available. The USPTO
plans to invite a number of roundtable participants from among patent
user groups, practitioners, industry, independent inventor
organizations, academia, and government. The roundtable also is open
for any member of the public to provide input.
[[Page 70386]]
DATES: The roundtable will be held on Friday, January 11, 2013,
beginning at 8:30 a.m. and ending at 12:00 p.m. EDT.
The deadline for receipt of requests to participate in the
roundtable is Friday, December 21, 2012.
The deadline for receipt of written comments is Friday, January 25,
2013.
ADDRESSES: The roundtable will be held at the USPTO, in the Madison
Auditorium on the concourse level of the Madison Building, which is
located at 600 Dulany Street, Alexandria, Virginia 22314.
Requests to participate at the roundtable are required and must be
submitted by electronic mail to [email protected].
Requests to participate at the roundtable should indicate the following
information: (1) The name of the person desiring to participate and his
or her contact information (telephone number and electronic mail
address); and (2) the organization(s) he or she represents.
Written comments may be submitted by either of the following
methods:
Electronic Mail:
[email protected]mailto:[email protected].
Postal Mail: Saurabh Vishnubhakat, Expert Advisor, Office
of Chief Economist, United States Patent and Trademark Office, Mail
Stop External Affairs, P.O. Box 1450, Alexandria, VA 22313-1450.
Although written comments may be submitted by postal mail, the
USPTO prefers to receive written comments via electronic mail.
The written comments and list of the roundtable participants and
their associations will be available for public inspection at the
Office of Chief Economist, located in the Madison Building East, Second
Floor, 600 Dulany Street, Alexandria, Virginia 22314, and will be
available via the USPTO Web site (address: http://www.uspto.gov).
Because written comments will be made available for public inspection,
information that is not desired to be made public, such as an address
or phone number, should not be included in the written comments.
FOR FURTHER INFORMATION CONTACT: Requests for additional information
should be directed to Saurabh Vishnubhakat by electronic mail at
[email protected] or by telephone at (571) 272-6900.
SUPPLEMENTARY INFORMATION: The USPTO is considering means for
collecting and disseminating information about the real-party(ies)-in-
interest for patent applications and issued patents. It is increasingly
clear that the completeness of the patent record, including the
ownership of patent applications and patents, plays an essential role
in the efficient functioning of innovation markets. Since intangible
assets now make up over fifty percent of the value of business outputs
of U.S. industry, intellectual property rights are one key mechanism by
which such intangibles can be exchanged, providing profits for
innovators and moving technologies to their most efficient uses in the
economy.
To avoid business and legal risk, the clearing of intellectual
property rights is often undertaken by manufacturers or distributors
prior to production and marketing. In such cases, the clearance of
intellectual property rights is often made more difficult and time-
consuming, legally risky, and expensive because current ownership
information on patent applications and issued patents is not available.
An incomplete ownership record thus presents a significant barrier to
competition and market efficiency. Markets operate most efficiently
when buyers and sellers can find one another. Yet in our current
system, fragmented ownership in the patent rights covering complex
products leads to potential buyers facing difficulty finding sellers,
and to potential innovators not understanding the nature of the
marketplace they are considering entering.
To address the need for accurate ownership information for pending
patent applications and issued patents, the USPTO is interested in
providing more complete patent ownership information to the public, in
accordance with the Office's duty under 35 U.S.C. 2(a)(2) of
``disseminating to the public information with respect to patents.''
A more complete ownership record would produce a number of
benefits. The public would have a more comprehensive understanding of
what patent rights being issued by the United States are being held and
maintained by various entities. The financial markets would have more
complete information about the valuable assets being generated and held
by companies. Inventors and manufacturers would better understand the
competitive environment in which they are operating, allowing them to
better allocate their own research and development resources, and more
efficiently obtain licenses and accurately value patent portfolios and
patent estates that they may seek to acquire.
Beyond providing these public benefits, accurate and up-to-date
ownership information is needed to facilitate examination of patents by
the USPTO, particularly in light of certain new provisions of the
America Invents Act, Public Law 112-29 (Sept. 16, 2011) (``AIA''), that
will become effective in March 2013. Courts have previously recognized
that the USPTO has the authority to promulgate regulations that ``shall
govern the conduct of proceedings in the Office.'' Star Fruits S.N.C.
v. U.S., 393 F.3d 1277, 1282 (Fed. Cir. 2005) (quoting 35 U.S.C.
2(b)(2)); see also Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335
(Fed. Cir. 2008) (``To comply with section 2(b)(2)(A), a Patent Office
rule must be `procedural'--i.e., it must `govern the conduct of
proceedings in the Office.' ''). Pursuant to this authority, the Office
may require the submission of information that is reasonably necessary
to proper examination or treatment of the matter at hand, provided that
such requests are not arbitrary or capricious. See Star Fruits, 393
F.3d at 1283-84.
Furthermore, the USPTO seeks real-party-in-interest information in
part to ensure that a ``power of attorney'' is current in each case.
The USPTO has a strong interest in ensuring that current
representatives in any proceeding before the USPTO are authorized by
the current owner. See Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed.
Cir. 2006) (``[T]he PTO has broad authority to govern the conduct of
proceedings before it and to govern the recognition and conduct of
attorneys.'').
Moreover, for patent proceedings before the Office, it is important
for the USPTO to know the real party(ies) in interest in order to avoid
potential conflicts of interest for judges and examiners alike. For
example, ``in the case of the Board, a conflict would typically arise
when an official has an investment in a company with a direct interest
in a Board proceeding. Such conflicts can only be avoided if the
parties promptly provide information necessary to identify potential
conflicts.'' See Rules of Practice for Trials Before the Patent Trial
and Appeal Board and Judicial Review of Patent Trial and Appeal Board
Decisions, 77 FR 48612, 48617 (Aug. 14, 2012). Like administrative
patent judges at the Board, ``[p]atent examiners are quasi-judicial
officials.'' Western Elec. Co., Inc. v. Piezo Tech., Inc., 860 F.2d
428, 431 (Fed. Cir. 1988) (citing Butterworth v. United States ex rel.
Hoe, 112 U.S. 50, 67 (1884)). Accordingly, a clear identification of
the real-party-in-interest is important to ensure that officials are
able to recuse themselves in view of any conflict-of-interest apparent
from the disclosure. In addition, ``[t]he identity of a real party in
interest might also affect the credibility of evidence
[[Page 70387]]
presented in a proceeding.'' 77 FR at 48617.
Additionally, changes made by the America Invents Act to the
categories of what constitutes prior art increase the need to have
accurate and up-to-date ownership information about patent applications
and issued patents in order to make determinations of novelty. See 35
U.S.C. 102(b). In particular, section 102(b)(2)(C) exempts as prior art
those patent applications or issued patents that name different
inventors where ``the subject matter disclosed and the claimed
invention, not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an obligation of
assignment to the same person'' (emphasis added). Because ownership of
an earlier-filed patent application or issued patent may prevent its
use as prior art against a later-filed patent application,
patentability may depend not just on the content of the prior art
patent application or issued patent, but also on who owns it.
Further, new section 102(b)(2)(C) differs from the previous
statutory provision on which it was based, 35 U.S.C. 103(c)(1) (2011).
While section 103(c)(1) (2011) concerned an exception to obviousness
rather than an exception to what constitutes prior art, it otherwise
recited virtually identical language to that of the current section
102(b)(2)(C) except that section 103(c)(1) stated that patentability
was not precluded where ``the subject matter and the claimed invention
were, at the time the claimed invention was made, owned by the same
person or subject to an obligation of assignment to the same person.''
Under the earlier section 103(c)(1), whether earlier subject matter was
prior art was established at the time when the claimed invention in the
later-filed application was ``made,'' by considering whether the
earlier subject matter was owned by the same entity that owned (or had
a right to own) the claimed invention that was just made. In contrast,
under new section 102(b)(2)(C), there may be an opportunity--in the
period before the filing of the second application--for ownership to
change in a way that affects whether the earlier patent or patent
application is prior art for purposes of section 102(b). As a result,
tracking ownership information for patent applications and issued
patents is directly relevant to questions of novelty during prosecution
and to mechanisms for challenging patents post-issuance.
In the prosecution context, the new section 102(b)(2)(C) presents
the possibility that a greater amount of prior art might be subject to
this exemption than under previous section 103(c)(1), which, in turn,
could render the current method of handling the possibility of common
ownership--the examiner presenting an initial rejection, and the
applicant rebutting the rejection with proof of ownership, see MPEP
section 706.02(1)(2)--inefficient in a manner that would undermine the
principles of compact prosecution. See id. at section 706 (``The goal
of examination is to clearly articulate any rejection early in the
prosecution process so that the applicant has the opportunity to
provide evidence of patentability and otherwise reply completely at the
earliest opportunity.'').
In addition, the availability of new types of third-party
proceedings that may be filed with the USPTO has created a need for the
Office to collect and publish timely ownership information. Previously,
many ``proceedings in the Office'' were initiated by patent applicants
or applicants-turned-patentees. In the relatively recent past, third
parties have become able to initiate ex parte reexamination proceedings
(1981) as well as inter partes reexamination proceedings (1999). Such
third party-initiated reexamination proceedings often arose out of
disputes between the patentees and third-party requestors. Now, under
the AIA, parties with no ownership interest in the patent, i.e., third
parties, are entitled to request initiation of certain post-grant
proceedings before the Office, including inter partes review under 35
U.S.C. 311 and post-grant review under 35 U.S.C. 321. Because of
certain statutory deadlines imposing short time frames for action
(e.g., nine months after patent grant, see 35 U.S.C. 321(c)), it may
often be impractical or impossible for third parties to discover
ownership information through other means, such as through disputes
arising between patentees and third parties. Accordingly, whether to
initiate such proceedings is a decision that third parties will often
have to make based primarily on the USPTO record, making it important
for that record to contain ownership information that is as accurate
and complete as possible.
In particular, both inter partes reexamination and post-grant
review proceedings contemplate that challenges may be predicated on
prior art under 35 U.S.C. 102(b)(2)(C). See 35 U.S.C. 311(b) and 321(b)
(allowing for use of prior art under, inter alia, section 102(b)(2)(C)
in inter partes and post-grant review proceedings, respectively). But
third parties will not necessarily be able to ascertain what is
properly considered prior art under section 102(b)(2)(C) without access
to accurate ownership information for patent applications and issued
patents (including a record of whether and how ownership has changed).
In part for this reason, the Office plans not only to collect such
ownership information, but also to make it publicly available
concurrently with the publication of patent applications or issued
patents.
In addition, for patents that enter any kind of post-grant review
proceedings, the Office requiring the submission of updated ownership
information for that patent (or a confirmation that the ownership
information has not changed) would facilitate reexamination for the
reasons discussed previously in this notice. Furthermore, it would
allow the Office to verify that a bona fide third party is making the
request for inter partes review or post-grant review, as required by 35
U.S.C. 311(a) and 321(a), respectively; to verify that the petitioner
applying for review of a covered business method patent is a real-
party-in-interest or privy to an entity that has been sued or charged
with infringement of that patent, as required by 37 CFR 42.302(a); and
to verify that a bona fide patent owner is making the request for
supplemental examination, as required by 35 U.S.C. 257(a).
Moreover, because the USPTO will be collecting and publishing this
information, it also has an interest in ensuring that such public
information remains as accurate and up-to-date as possible. This is
consistent with several statutory provisions directing the Office to
disseminate information to the public as well as those directing the
Office to provide access to information through electronic means. See
35 U.S.C. 2(a)(2) (creating a duty of ``disseminating to the public
information with respect to patents''); section 10(a)(4) (providing for
publication of information, including ``annual indexes of * * *
patentees''); section 10(b) (providing that the ``Director may exchange
* * * for publications desirable for the use of the [Office]''); and
section 41(i) (creating a duty to provide access to information
electronically).
The USPTO published a Request for Comments on November 23, 2011,
regarding whether regulations should be promulgated for the collection
of assignment and real-party-in-interest information for both
applications and patents. See Request for Comments on Eliciting More
Complete Patent Assignment Information, 76 FR 72372 (Nov. 23, 2011).
Responses to this request for comments were more favorable towards the
proposal than unfavorable. See http://www.uspto.gov/
[[Page 70388]]
patents/law/comments/patent--assignment--information.jsp.
The USPTO is now planning to conduct a roundtable at its
Alexandria, Virginia, campus to discuss with the patent and innovation
community whether--and, if so, how--the USPTO should require submission
of real-party-in-interest information throughout the pendency of an
application and the enforceable life of a patent. To focus the
discussion, the USPTO provides the following description of what
information it envisions collecting, and how such information will be
collected and published:
Information To Be Collected
The USPTO proposes to collect ``real-party-in-interest'' (``RPI'')
information on patent applications and patents in order to facilitate
examination before the Office and for the other reasons and benefits
discussed above. The USPTO believes that these interests can be met
through the collection of RPI information where RPI is defined in at
least two different ways, described in more detail below. It is
important to note that the Office would consider whatever definition is
adopted for this purpose as not necessarily coinciding with how the
term real-party-in-interest may be used elsewhere in the Office, or
with the term ``ownership'' as that term is used in Title 35 and in the
Office's implementing regulations. The Office welcomes comments on the
definitions proposed here for RPI, as well as the suitability of other
definitions or standards.
Alternative Definition 1: ``Broad'' RPI
Under the first alternative definition, RPI would correspond to
those entities having the legal right to enforce the patent, i.e.,
those parties that would be necessary and sufficient to bring a legal
infringement action. See Vaupel Textilmaschinen KG v. Meccanica Euro
Italia SPA, 944 F.2d 870, 875-76 (Fed. Cir. 1991); 35 U.S.C. 154(a)(1).
As discussed above, this information is directly relevant to
identifying conflicts of interest that might arise in examination
contexts. Moreover, it is consistent with the need to make prior art
determinations under 35 U.S.C. 102(b)(2)(C) because it identifies all
parties that might have a claim to ownership of the patent application
or issued patent. This definition would likely require disclosure of
exclusive licensees in certain cases. This RPI information would be
useful both to the Office and to the public by providing a clear idea
of all the entities that have an interest in the patent application or
issued patent as well as, for patents, a clear idea of the entity(ies)
in possession of the legal right to exclude. See 35 U.S.C. 154.
Alternative Definition 2: ``Limited'' RPI
Under the second alternative definition, the interested parties
needing to be disclosed would be limited to the legal title holder(s)
and ``ultimate parent entity(ies)'' of the patent application or issued
patent. The term ``ultimate parent entity'' would be based on the
definition (along with the accompanying examples) set forth in 16 CFR
801.1(a)(3), which defines it as ``an entity which is not controlled by
any other entity.'' The rationale behind defining RPI in this manner is
to limit the entities that need to be identified based on the
assumption that although not every interested entity would be listed,
information about these other parties (if needed) could, in most cases,
be deduced or obtained from the information provided. For example,
information provided about the ultimate parent entity would be likely
to alert the examiner to a conflict of interest not otherwise disclosed
in many cases, even if the actual conflict concerned a subsidiary
entity that did not itself need to be disclosed. Focusing information
collection on the ultimate parent entity could also facilitate searches
for patent applications and issued patents having common ownership,
which could be of benefit to the Office and public alike. Moreover,
this narrower definition of RPI would have the benefit of potentially
reducing administrative costs in collecting and updating RPI
information. Exclusive licensee information would likely not need to be
provided, and following section 801.1, the United States or foreign
states would not need to be reported as ultimate parent entities
(though they may still be legal title holders). Although the Office
considers the definition in section 801.1 as a model, the Office
welcomes any suggestions on how to modify the definition to be more
suitable for use before the USPTO, and on whether the direct adoption
of a well-established definition would itself be beneficial.
Timing of RPI Information Collection
For purposes of facilitating examination and the ability of third
parties to appropriately seek to challenge patents post-issuance, the
USPTO aims to provide RPI information for patent applications and
issued patents that is as up-to-date and accurate as possible. To this
end, the USPTO envisions collecting such information at the time that
an application is initially filed for internal examination purposes
(though this information will be treated as confidential in accordance
with the provisions of 35 U.S.C. 122); requiring applicants to notify
the Office about any changes in RPI information during prosecution; and
verifying on at least two occasions that the information on file is
correct: immediately prior to 18-month publication (though patent
applications would only be published in accordance with 35 U.S.C. 122),
and prior to issuance. For issued patents, the Office will likewise
require the information on file to be verified or updated when
maintenance fees are paid and if the patent becomes involved in any
post-issuance proceedings before the Office.
The Office plans to collect RPI information from applicants in the
application data sheet (for example, Application Data Sheet, PTO/SB/14)
instead of, or in addition to, the current ``Assignee'' information.
Intervening updates would be submitted to the Office through the
submission of an additional ``change form.'' An applicant would have a
duty to update the RPI information within a reasonable time period of
any change. See 37 CFR 1.56. The Office envisions that a reasonable
period of time would be within three months of any reportable change,
similar to the presumptive period of time in which applicants are
expected to reply to any notice or action by the Office in the context
of patent term adjustments under 37 CFR 1.704(b). The pre-18-month
publication verification would likely necessitate the submission of a
new form. For issuance, the Office envisions this process as simply
including a statement that the applicant or owner ``certifies that the
RPI information on file at the USPTO is accurate and unchanged.'' Any
unreported changes at this time could be fixed by filling out the
aforementioned change form and, as appropriate, any fees or explanation
why such change had not been reported earlier. The USPTO welcomes
feedback about how long a presumptive reasonable time period would be
and about mechanisms for excusing late updates in appropriate
circumstances. See, e.g., 37 CFR 1.137 (providing for revival of lapsed
patents or patent applications where delay was unavoidable or
unintentional).
After patent issuance, the USPTO intends to have RPI information
verified at the time of maintenance fee payments using a procedure
similar to that outlined for issuance of a patent (the inclusion of a
statement verifying that the USPTO information is accurate, or the
submission of a change form if not). The Office likewise plans to
collect such
[[Page 70389]]
information any time that an issued patent is involved in a proceeding
before the Office post-issuance, including: reissue applications under
35 U.S.C. 251, supplemental examinations under 35 U.S.C. 257,
reexaminations under 35 U.S.C. 302, inter partes reviews under 35
U.S.C. 311, post-grant reviews under 35 U.S.C. 321, and the
transitional program for covered business method patents under 37 CFR
part 42, subpart D.
In sum, the Office envisions collecting or verifying RPI
information as follows:
------------------------------------------------------------------------
------------------------------------------------------------------------
Submission of application.... Applicant provides RPI information as
part of the original application data
sheet.
Through pendency of Applicant is responsible for ensuring
prosecution. that any changes in RPI information are
submitted to the Office within a
reasonable period of time.
Prior to 18-month publication Applicant submits a form verifying that
date. RPI information on file is accurate.
Changes may be submitted in a
supplemental form with an explanation
for why the submission is timely. Note
that information may be collected for
all applications, though applications
will only be published in accordance
with 35 U.S.C. 122.
Upon issuance................ Applicant's payment is accompanied by a
form statement that RPI information on
file is accurate. Changes may be
submitted in a supplemental form with an
explanation for why the submission is
timely.
Upon payment of maintenance Patentee's payment is accompanied by a
fees. form statement that RPI information on
file is accurate, or is accompanied by
changes in a supplemental form.
Involvement in any post-grant Patentee is required to verify that RPI
proceedings. information on file is accurate, or to
submit changes in a supplemental form.
------------------------------------------------------------------------
The Office envisions this process applying to new applications
filed after the date of any final rules coming into effect and after 35
U.S.C. 102(b)(2)(C) becomes effective on March 16, 2013. For pending
applications where there has already been submission of an application
data sheet, applicants would be required to submit RPI information at
the next event described above (prior to 18-month publication or prior
to issuance, or in conjunction with any continuing applications), and
would then be responsible for updating any changes thereafter, through
patent issuance. For issued patents, RPI information would be required
in conjunction with the payment of the next maintenance fee, and with
any subsequent maintenance fee payments thereafter--or instead,
verification that the RPI information on file is unchanged.
Provision of RPI Information to the Public
While the USPTO would be able to use the information collected
immediately for examination purposes, RPI information would be made
available to the public in accordance with 35 U.S.C. 122, with RPI
information being published in conjunction with the publication of a
patent application or issued patent. The Office anticipates providing
information about the current RPI as well as a history of any RPI
changes in an accessible electronic format, such as on Public PAIR, in
conjunction with a patent application or issued patent.
Details About the Roundtable
The number of participants in the roundtable is limited to ensure
that all who are speaking will have a meaningful chance to do so. The
USPTO plans to invite a number of participants from patent user,
practitioner, industry, and independent inventor organizations, as well
as academia, industry, and government to provide input. The USPTO also
plans to have a few at-large participants based upon requests received
in response to this notice to ensure that the USPTO is receiving a
balanced array of views on possible requirements for patent ownership
recordation.
The roundtable is open to the public, but participation in the
roundtable is by request, as the number of participants in the
roundtable is limited. While members of the public who wish to
participate in the roundtable must do so by request, members of the
public who wish solely to observe need not submit a request to attend.
Any member of the public, however, may submit written comments for
consideration by the USPTO on issues raised at the roundtable or on any
issue pertaining to patent ownership recordation. Persons submitting
written comments should note that the USPTO does not plan to provide a
``comment and response'' analysis of such comments, as this notice is
not a notice of proposed rulemaking.
The USPTO plans to make the roundtable available via Web cast. Web
cast information will be available on the USPTO's Internet Web site
before the roundtable. The written comments and list of the roundtable
participants and their associations will also be posted on the USPTO's
Internet Web site.
Dated: November 9, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-28333 Filed 11-23-12; 8:45 am]
BILLING CODE 3510-16-P