The PTO has published an extensive proposed rule to require patent and patent applications to identify the “attributable owner.” The PTO asserts that the public should be able to identify the true owner of a patent, many patent owners–including the infamous and scary patent assertion entities–are seeking to hide the identity of the true owner. Therefore, the PTO is seeking to require the true owner to be identified.
As noted in the summary by Patently-O, however, this is not nearly so simple as it sounds. Many patent owners have complex corporate structures that include parent companies, partially or wholly-owned subsidiaries, and multiple entities at various levels. Property ownership is generally governed by state law with some patent ownership rules governed by federal law, not to mention foreign entities whose existence is governed by the laws of its country of origin. Thus, there is a veritable panoply of entities that may be involved in patent ownership.
And, beyond that, property rights can be divided in a number of ways. There are actual title-holders, such as assignees; there are licensees who may have some rights to the property and not others; there are parties that have equitable interests in property; there are easement-holders.
To cover the myriad of possibilities, the PTO seeks the identity of the “attributable owner.” This means that the actual titleholder or assignee must be identified. Certainly this would include the ultimate parent entity of the titleholder as well. Any other parties that are necessary for enforcement of the rights in that patent need to be identified. This would include exclusive licensees and other parties that would be necessary for enforcement. Finally, the PTO seeks information on entities that temporarily divest or prevent vestment of ownership or other rights in the patent. This would include trusts, proxies, and similar entities. These seem to be some of the entities that the PTO considers to be used to hide the true identity of real parties in interest.
The proposed rules would require that the attributable owner be identified at the time of filing a patent application, when there is a change in the attributable owner during pendency of the application, at the time of payment of the issue fee or any maintenance fees, and when a patent is involved in any type of post grant review, including ex parte reexamination, supplemental examination, or proceedings before the Patent Trial and Appeal Board.
Applicants and patent owners will generally be given three months from the date of these events to provide the PTO with this information. If the applicant or patent owner fails to do so, the patent or application will be deemed abandoned.
The PTO is also seeking information from patent applicants and owners regarding licensing information and offers. The PTO would like to make this information available to the public in an online format. It is assumed that this information would be provided voluntarily.
Given the complexity of property ownership, the proposed rules are quite extensive. The PTO seeks comments on the rules by March 25.