The USPTO Does Not Need The Onerous Proposed Attributable Owner Rules

The Federal Register Notice promulgating the proposed Attributable Owner rules offers some lofty justifications for the rules. Because the rules have been promulgated pursuant to a White House initiative, they are likely to take effect in some form, but applicants and stakeholders should not miss the opportunity to submit comments and suggestions to the USPTO in an effort to make the final rules less onerous.

The Proposed Onerous Definition of Attributable Owner

The USPTO has proposed to impose an ongoing requirement to disclose all "attributable owners" of a pending application or granted patent, defining "attributable owner" as follows:

§ 1.271 Attributable owner (Real-parties-in-interest for reporting purposes). (a) The attributable owner of a patent or application includes each of the following entities: (1) An entity that, exclusively or jointly, has been assigned title to the patent or application; and (2) An entity necessary to be joined in a lawsuit in order to have standing to enforce the patent or any patent resulting from the application. (b) The attributable owner of a patent or application includes the ultimate parent entity as defined in 16 CFR 801.1(a)(3) of an entity described in paragraph (a) of this section. (c) Any entity that, directly or indirectly, creates or uses a trust, proxy, power of attorney, pooling arrangement, or any other contract, arrangement, or device with the purpose or effect of temporarily divesting such entity of attributable ownership of a patent or application, or preventing the vesting of such attributable ownership of a patent or application, shall also be deemed for the purpose of this section to be an attributable owner of such patent or application.

The USPTO Justifications for the Attributable Owner Rules

As a federal agency subject to the Administrative Procedures Act, the USPTO has to justify its needs for information required from the public. The Federal Register Notice states that the information required under the proposed Attributable Owner rules will facilitate patent examination and other parts of the Office's internal processes by helping to:

[e]nsure that a ''power of attorney'' is current in each application or proceeding before the Office; avoid potential conflicts of interest for Office personnel; determine the scope of prior art under the common ownership exception under 35 U.S.C. 102(b)(2)(C) and uncover instances of double patenting; verify that the party making a request for a...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT