USPTO Proposes To Require Disclosure Of Patent Ownership, Exclusive Licenses

Last year, on November 23, 2011, the USPTO announced that it was considering collecting information on patent ownership and requiring disclosure of patent ownership information throughout the patent application process. Although written comments were due by January 23, 2011, the USPTO has not issued any response to public comments. Instead, in a Federal Register Notice issued November 26, 2012, the USPTO announced that it is considering promulgating regulations that would require the disclosure of "real party in interest" (RPI) information throughout the patent application process and after grant. The USPTO is holding a "roundtable" to discuss this proposal on Friday, January 11, 2013, at its Alexandria, Virginia campus. Requests to participate in the roundtable must be submitted by Friday, December 21, 2012. Written comments on the proposal are due by Friday, January 25, 2013.

The 2011 Proposal

As set forth in the 2011 Federal Register Notice, the USPTO was considering requiring applicants to provide ownership information at the following stages of prosecution:

At the time of application filing. After filing, in time for inclusion on the patent application publication. After filing, when any new ownership rights cause the application or patent to gain or lose entitlement to small entity status. The USPTO also was considering amending 37 CFR § 3.81 to require that the application issue in the name of the assignee or assignees as of the date of payment of the issue fee. (Currently, this is an option but not a requirement.)

The proposal was based on the following possible public benefits of the publication of more complete and current patent ownership information:

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. Patenting 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. The 2012 Proposal

The 2012 proposal appears to build on the 2011 proposal, but was issued as an independent notice. Indeed, only one sentence in the 2012 Federal Register Notice mentions the 2011 proposal:

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...