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USPTO Proposal to Require Identification of Patent Owners

USPTO Proposal to Require Identification of Patent Owners. Stephen S. Wentsler AIPPI/JFBA/AIPLA Joint Meeting Tokyo, Japan April 7, 2014. June 4, 2013 White House issued an executive order titled “Making ‘Real Party in Interest’ the New Default”

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USPTO Proposal to Require Identification of Patent Owners

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  1. USPTO Proposal to Require Identification of Patent Owners Stephen S. Wentsler AIPPI/JFBA/AIPLA Joint MeetingTokyo, Japan April 7, 2014

  2. June 4, 2013 White House issued an executive order titled “Making ‘Real Party in Interest’ the New Default” • January 24, 2014 issued Notice of Proposed Rulemaking • Federal Register / Vol. 79, No. 16

  3. Who is considered an “Attributable Owner”?

  4. Who is an “attributable owner”? • Titleholder • Assignee • The entity that has been exclusively or jointly assigned title to the patent or application. • Sometimes the exclusive licensee if enough rights were transferred to effectively be an assignment • Enforcement Entity • Entity with the rights to enforce the patent • Entity is necessary to be joined in a lawsuit in order to have standing to enforce the patent or any patent resulting from an application

  5. Who is an “attributable owner”? • Ultimate Parent Entity • The entity who: • has ultimate control of the enforcement entity and/or the titleholder; and • is not controlled by any other entity.

  6. Who is an “attributable owner”? • Ultimate Parent Entity • Control means • If incorporated – entity who holds 50% or more of the outstanding voting shares • If not incorporated – • entity having the right to 50% or more of the profits, or • entity having the rights to 50% or more of the assets of the entity upon dissolution • Entity having the contractual power to designate 50% or more of the directors of a corporation • Trustee of an irrevocable trust in which the settlor does not retain a reversionary interest

  7. Who is an “attributable owner”? • Hidden Beneficial Owners • An entity who hides its interest by preventing vesting of the interest with the entity • An entity that hides its interest by temporarily divesting itself of attributable ownership

  8. Example – Who are the attributable owners? P6 P1-3 P4-5 D & E each own 50% of C D E Attributable Owners: Titleholder – A Enforcement entity – B Ultimate parent entities – D, P4, P5 Hidden Beneficial Owner – P6 C C Parent to B B enforces patents held by A B patent A Holding company

  9. What information about the attributable owner needs to be disclosed?

  10. What needs to be disclosed? • Public Company • Name of the company • Stock symbol • Stock exchange where the company is listed • Non-Public Company • Name of the company • Place of incorporation • Address of the principal place of business

  11. What needs to be disclosed? • Partnership • Name of the partnership • Address of the principal place of business • If a natural person • Full name • Residence • Correspondence address • Other entity • Name • Name of the state if organized under the state laws • Address of the principal place of business

  12. When does the attributable owner need to be disclosed to the USPTO?

  13. Disclosure to the USPTO • At the time the application is filed (or shortly thereafter) • Does not apply to provisional • Applies to the national stage application (not the international application) • Considering 2-month shortened period of reply • Extendable by 5 months • Within 3 months of any change in the attributable owner during the pendency of the application • Not extendable

  14. Disclosure to the USPTO • At the time of issue fee • Due within 3 months (not extendable) or the application/patent will be abandoned • At the time of payment of the maintenance fee • Due before payment of the maintenance fee

  15. Disclosure to the USPTO • When the patent is involved in certain post-issuance proceedings at the USPTO • Filing a request for supplemental examination • Filing a request for ex parte reexamination • Filing a reply by the patent owner in an ex parte reexamination • If a change happens during the reexamination proceeding, the patent owner has 3 months from the change to the attributable owner to notify (not extendable) • Trial proceeding before the Patent Trial and Appeal Board (PTAB) • If a change happens during the PTAB proceeding – must notify within 21 days from the date of the change (not extendable)

  16. Which applications will be required to comply with the Rules?

  17. Applications required to comply with the Rule • Identify at time of filing or when there is a change in an attributable owner • Required for all applications filed on or after the effective date of the final Rule • Identify at the time of payment of the issue fee • Provided that the Notice of Allowance was mailed on or after the effective date of the final Rule

  18. Applications required to comply with the Rule • Identify at time of payment of the maintenance fee • Required if the payment occurs on or after the effective date of the final Rule • Identify when petition/request is filed • Required if the petition/request is filed on or after the effective date of the final Rule

  19. Voluntary Disclosures

  20. Voluntary Disclosures • Licensing offers and related information to the Office • Willingness to license • Licensing contacts • License offer terms • Commitments to license the patent • Office may make information available to the public on a searchable database such as the Public “Patent Application Information Retrieval” (PAIR) system.

  21. Who will have access to the information at the USPTO

  22. Access to the Information • PTO examiners and staff • The public on any published application or issued patent • The USPTO expects to make the current attributable owner information available as well as historical changes to the attributable owner

  23. Further information and comments

  24. More Information Available • USPTO Website • http://www.uspto.gov/patents/init_events/attributable_ownership.jsp

  25. Public Comments • Written Comments on the Proposed Rulemaking Due April 24, 2014 • By Email • AC90.comments@uspto.gov • By Postal Mail Attn: Mr. James Engel, Senior Legal Advisor Mail Stop Comments-Patents Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 • By Federal eRulemaking Portal • http://www.regulations.gov

  26. Thanks for your attention! Questions? Stephen S. Wentsler Partner Pearne & Gordon LLP 1801 East 9th Street, Suite 1200 Cleveland, Ohio 44114 +1-216-579-1700 swentsler@pearne.com

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