[Federal Register Volume 79, Number 34 (Thursday, February 20, 2014)]
[Proposed Rules]
[Pages 9677-9678]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-03629]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2014-0004]


Notice of Public Hearings and Extension of Comment Period on the 
Proposed Changes To Require Identification of Attributable Owner

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of public hearings and extension of comment period.

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SUMMARY: The United States Patent and Trademark Office (Office) 
published a notice on January 24, 2014, proposing changes to the rules 
of practice to require that the attributable owner, including the 
ultimate parent entity, be identified during the pendency of a patent 
application and at specified times during the life of a patent, and 
seeking written comments on the proposed changes. This initiative is 
one of a number of executive actions issued by the Administration that 
are designed to ensure issuance of the highest-quality patents, enhance 
competition by providing the public with more complete information 
about the competitive environment in which innovators operate, improve 
market efficiency for patent rights by making patent ownership 
information more readily and easily available, reduce abusive patent 
litigation by helping the public defend itself against frivolous 
litigation, and level the playing field for innovators. The Office is 
conducting two public hearings to discuss these proposed changes. The 
public hearings are an additional way for the Office to introduce the 
proposed changes and directly receive feedback from the public. The 
Office also is extending the period for public comment on the proposed 
changes until April 24, 2014, to provide interested members of the 
public with additional time to submit written comments.

DATES: Public Hearing Dates: The first public hearing will take place 
on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m. 
EDT, in Alexandria, Virginia.
    The second public hearing will take place on March 26, 2014, from 9 
a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco, 
California.
    Requests to Provide Oral Testimony: Those wishing to provide oral 
testimony at either public hearing must submit a request to do so in 
writing no later than February 28, 2014. Members of the public who wish 
to attend solely to observe need not submit a request to attend.
    Comment Deadline Date: To be ensured of consideration, written 
comments on the proposed changes to the rules of practice to require 
identification of the attributable owner must be received on or before 
April 24, 2014.

ADDRESSES: Public Hearings: The first public hearing will take place 
at: Madison Auditorium North, Concourse Level, United States Patent and 
Trademark Office Headquarters, 600 Dulany Street, Alexandria, Virginia 
22314.
    The second public hearing will take place at: the University of 
California Hastings College of the Law, Louis B. Mayer Lounge, 198 
McAllister Street, San Francisco, California 94102.
    Requests to Provide Oral Testimony: Requests to provide oral 
testimony at either public hearing must be sent by electronic mail 
message over the Internet addressed to: [email protected].
    Comments: Comments should be sent by electronic mail message over 
the Internet addressed to: [email protected]. Comments also may 
be submitted by postal mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of James Engel, Senior Legal Advisor, Office of 
Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy.
    Comments likewise may be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments in plain text are preferred, but 
comments in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format are also acceptable. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    Comments will be available for public inspection at the Office of 
the Commissioner for Patents, currently located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be 
available for viewing via the Office's Internet Web site (http://www.uspto.gov). Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.

FOR FURTHER INFORMATION CONTACT: James Engel, Senior Legal Advisor 
((571) 272-7725), or Erin M. Harriman, Legal Advisor ((571) 272-7747), 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The Office recently published a notice of 
proposed rulemaking proposing to require the disclosure of ownership 
information about patents and applications and requesting comments 
about the voluntary reporting of licensing offers and commitments and 
making them

[[Page 9678]]

available online. See Changes to Require Identification of Attributable 
Owner, 79 FR 4105 (Jan. 24, 2014). The Office is conducting two public 
hearings to discuss these proposed changes and receive feedback from 
the public. The Office also is extending the period for public comment 
on the proposed changes until April 24, 2014, to provide interested 
members of the public with additional time to submit written comments.
    Members of the public who wish to provide oral testimony at either 
public hearing must submit a timely request (i.e., must submit a 
request to provide oral testimony no later than February 28, 2014). 
Requests to provide oral testimony at either public hearing must 
indicate the following information: (1) The name of the person desiring 
to speak; (2) the person's contact information (telephone number and 
electronic mail address); (3) the organization(s) the person 
represents, if any; and (4) the hearing location where the person 
prefers to speak. A person must be physically present at the hearing 
location to provide oral testimony; virtual testimony via telephone or 
webcast is not available. Based on the requests received, an agenda of 
scheduled speakers will be sent to those speaking and posted on the 
Office's Internet Web site at http://www.uspto.gov. The number of 
speakers and time allotted to each speaker may be limited to ensure 
that all persons speaking will have a meaningful chance to do so.
    Members of the public who wish to attend solely to observe need not 
submit a request to attend. The Office also plans to make the public 
hearings available via Web cast. Web cast information will be available 
on the Office's Internet Web site closer to the public hearing dates. A 
transcript of the public hearings will be available for viewing via the 
Office's Internet Web site at http://www.uspto.gov, and will be 
available for public inspection at the Office of the Commissioner for 
Patents, currently located in Madison East, Tenth Floor, 600 Dulany 
Street, Alexandria, Virginia 22314, upon request.
    The public is welcome to submit written comments in response to the 
proposed changes in addition to, or lieu of, presenting oral testimony 
at these public hearings. The Office is extending the period for public 
comment on the proposed changes to provide interested members of the 
public with additional time to submit written comments. Written 
comments in response to the proposed changes must be received on or 
before April 24, 2014.
    Under the proposed rulemaking, the Office plans to collect 
information on the ``attributable owner'' of a patent or application, 
which includes the titleholders, entities with rights to enforce the 
patent, and entities with effective control over anyone reported in the 
first two categories, called the ``ultimate parent entities.'' This 
information would be made available to the public under the proposed 
rulemaking at the same time a patent application is published or when a 
patent issues. The Office also seeks public comment on whether to 
permit patent applicants and owners to voluntarily report licensing 
offers and related information that the Office will make available to 
the public. The Office currently permits patent owners to request that 
their patents be listed in the Official Gazette as available for 
license or sale, and the Office would like public input on whether the 
Office should expand on this program to allow for the submission of 
more licensing information and make this information available in an 
accessible online format.
    The Office welcomes comments on all aspects of the proposed 
rulemaking, but highlights the following areas (which are also 
highlighted in the notice of proposed rulemaking) for receipt of public 
input:
    (1) The proposal sets forth a definition for attributable owner. 
The Office invites public comment on whether changes could be made to 
the scope of the information proposed to be collected while still 
achieving the objectives of the Office as set forth in the proposal.
    (2) Part of the current proposed definition of attributable owner 
incorporates by reference the definition of ultimate parent entity set 
forth in 16 CFR 801.1(a)(3). The Office welcomes comments on how this 
definition might be modified for use at the Office. The Office 
recognizes that corporations sometimes transfer patents and patent 
applications within the corporation for legitimate reasons, such as tax 
savings purposes, and also welcomes comments on the impact of the 
proposed changes on this practice.
    (3) The proposal sets forth when attributable owner information 
must be supplied to the Office. The Office invites public comments as 
to whether and when attributable owner information should be collected. 
For example, are there additional times during prosecution (e.g., with 
each reply to an Office action) when the applicant should be required 
to update or verify attributable owner information? Is requiring 
updates on changes during prosecution within three months of any change 
in attributable owner the appropriate time frame (i.e., should the time 
frame be more or less than three months?).
    (4) The Office plans to work with its user community to implement 
the attributable owner information reporting system in a user-friendly 
manner and welcomes input on how this can best be accomplished. Subject 
to financial and resource constraints, for example, the Office would 
like to explore means to allow for the bulk processing of changes to 
attributable owner for portfolios of applications and patents. The 
Office also welcomes input on how the updating or verifying by the 
applicant or owner should be structured in conjunction with the payment 
of maintenance fees, particularly in light of the practice of 
outsourcing payment of maintenance fees to third parties.
    (5) The Office further seeks comments on whether the Office should 
expand the current Official Gazette practice of allowing patent owners 
to list patents as available for license or sale to permit all patent 
applicants and owners to voluntarily report additional licensing 
information for the Office to make available to the public in an 
accessible online format. The Office welcomes input on what such 
licensing information should include (i.e., willingness to license, as 
well as licensing contacts, license offer terms, commitments to license 
the patent, e.g., on royalty-free or reasonable and non-discriminatory 
terms) and the interface of the online system.

    Dated: February 12, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-03629 Filed 2-19-14; 8:45 am]
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