A new rule proposal signed by Michelle Lee, deputy director of the United States Patent and Trademark Office, would require disclosure of the true owner of patents and patent applications.
The proposed rules, which would apply to new applications issued patents, and pending applications alike, offer a steep penalty for non-compliance: abandonment.
Spanning 17 pages in the federal register, the rules highlight interests the office hopes to serve through more accessible ownership information, including: greater public transparency, cost reductions for technology transfers and transactions for patent rights, and reductions in abusive patent litigation by aiding the public’s self-defense from frivolous litigation.
Though the rules mark the office’s foray into a heightened disclosure of ownership information, they represent a concept previously proposed by the White House in June. It is also embodied in a similar form in the Innovation Act, which was passed by the U.S. House of Representatives in December and is being considered by the Senate.
However, one terminology difference between the Innovation Act and the office’s proposed rules is the latter’s use of the broader term “attributable owner,” which requires identification of all titleholders and enforcement entities, as well as the ultimate parent entity for each. In addition, identification of entities established to temporarily divest title or enforcement rights, such as a proxy or trust, would also be required.
While this may seem burdensome for some, the office expects that “most additional reporting will need to be done by companies that have complicated corporate structures and licenses, which often include the complex structures used by certain patent assertion entities (“PAEs”) to hide their true identities from the public.”
In addition, the office will be considering whether to allow for voluntary reporting of licensing offers and related information.
The office will be accepting comments, which can be submitted by e-mail to AC90.comments@uspto.gov, until March 24, 2014.
Full text of the proposed rules is available here.