The Complexities Of The USPTO Proposed Attributable Ownership Rules

The USPTO proposed attributable ownership rules would require the public disclosure of the "attributable owner" of patent applications and patents. As discussed in this article, the proposed definition of "attributable owner" reaches far beyond title holder (assignee), and includes parties with standing to enforce the patent (including exclusive licensees), ultimate parent entities as defined in 16 CFR § 801.1(a)(3), and hidden beneficial owners. This article provides an overview of some of the complexities of the proposed rules and their potential conflict with other areas of law and public policy.

The Proposed Rules Exceed USPTO Authority

In the Federal Register Notice, the USPTO claims it can promulgate the proposed attributable ownership rules under 35 USC § 2, "which ... govern the conduct of proceedings within the Office." Yet, § 2 by its own terms restricts the USPTO's rule-making authority to regulations "not inconsistent with law," and it is well-settled that the USPTO does not have substantive rule-making authority. The proposed rules exceed the USPTO's authority on both counts.

None of 35 USC §§ 111, 251, 371 or any other statutes in the patent act contain a requirement for disclosing the attributable owner. Under the proposed rules, however, the attributable owner must be disclosed from filing to allowance of an application, and at key points during the life of a patent. This is contrary to statute.

More importantly, the rules are substantial. As proposed, failure to disclose the attributable owner would lead to abandonment. A rule that imposes a new requirement that is not required by any statute on the threat of loss of rights cannot be cast as "procedural."

The Federal Register Notice models its attributable ownership rules on those for assignment of title. But assignment is covered by a statute (35 USC § 261) that permits assignment and recordation, but makes that voluntary. Under the statute, there is no requirement for disclosure of even the titleholder, let alone other ownership rights. By imposing additional requirements on applicants and patent holders, the proposed rules are inconsistent with existing law.

The Proposed Rules Go Beyond Rules Promulgated Under the American Invents Act

The America Invents Act (AIA) created new inter partes proceedings conducted before the USPTO Patent Trial and Appeal Board (PTAB) that require the disclosure of the "real party-in-interest"(RPI) and its "privies". The USPTO promulgated...