Changes To Require Identification of Attributable Owner, 4105-4121 [2014-01195]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 79, Number 16 (Friday, January 24, 2014)]
[Proposed Rules]
[Pages 4105-4121]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-01195]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2013-0040]
RIN 0651-AC90


Changes To Require Identification of Attributable Owner

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to the rules of practice to facilitate the 
examination of patent applications and to provide greater transparency 
concerning the ownership of patent applications and patents. This 
initiative is one of a number of executive actions issued by the 
Administration that are designed to ensure the highest-quality patents, 
enhance competition by providing the public with more complete 
information about the competitive environment in which innovators 
operate, enhance technology transfer and reduce the costs of 
transactions for patent rights by making patent ownership information 
more readily and easily available, reduce abusive patent litigation by 
helping the public defend itself against frivolous litigation, and 
level the playing field for innovators. The Office is proposing in this 
document to require that the attributable owner, including the ultimate 
parent entity, be identified during the pendency of a patent 
application and at specified times during the life of a patent. The 
Office is specifically proposing that the attributable owner be 
identified on filing of an application (or shortly thereafter), when 
there is a change in the attributable owner during the pendency of an 
application, at the time of issue fee and maintenance fee payments, and 
when a patent is involved in supplemental examination, ex parte 
reexamination, or a trial proceeding before the Patent Trial and Appeal 
Board (PTAB). The Office is also seeking comments on whether the Office 
should enable patent applicants and owners to voluntarily report 
licensing offers and related information to the Office, which the 
Office will then make available to the public in an accessible online 
format.

DATES: Comment deadline date: Written comments must be received on or 
before March 25, 2014.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: AC90.comments@uspto.gov. Comments may also be 
submitted by postal mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of James Engel, Senior Legal Advisor, Office of 
Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional

[[Page 4106]]

instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments submitted in plain text are 
preferred, but also may be submitted in ADOBE[supreg] portable document 
format or MICROSOFT WORD[supreg] format. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(https://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: James Engel, Senior Legal Advisor 
((571) 272-7725), or Erin M. Harriman, Legal Advisor ((571) 272-7747), 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: On June 4, 2013, the White House issued 
five executive actions designed to increase transparency of the patent 
system, ensure the highest-quality patents, reduce abusive patent 
litigation and level the playing field for innovators. The first of 
these executive actions is titled ``Making `Real Party in Interest' the 
New Default,'' and calls for the Office to begin a rulemaking process 
to require patent applicants and patent owners to regularly update 
ownership information when the applicant or patent owner is involved in 
a proceeding before the Office, including designation of the ``ultimate 
parent entity(ies)'' of those owners. To help achieve the above goals 
as well as to improve the incentives for future innovation, to enhance 
competition by providing the public with more complete information 
about the competitive landscape and technology marketplace by making 
patent ownership information more readily available, and to help the 
Office carry out its task of patent examination, the Office is 
proposing changes to the rules of practice concerning the attributable 
owner of pending patent applications and patents. This document and the 
proposed rules have adopted the term ``attributable owner'' rather than 
``real party in interest'' to avoid confusion given that the term 
``real party in interest'' is used elsewhere in title 35, United States 
Code (e.g., 35 U.S.C. 118, 315, 317, 325, 327).
    The proposed changes will facilitate patent examination and other 
parts of the Office's internal processes by helping to: (1) Ensure that 
a ``power of attorney'' is current in each application or proceeding 
before the Office; (2) avoid potential conflicts of interest for Office 
personnel; (3) 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; (4) verify that the party making a request for a 
post-issuance proceeding is a proper party for the proceeding; and (5) 
ensure that the information the Office provides to the public 
concerning published applications and issued patents is accurate and 
not misleading. Beyond providing these benefits to the Office, 
collecting attributable owner information and making it publicly 
available is expected to: (1) Enhance competition and increase 
incentives to innovate by providing innovators with information that 
will allow them to better understand the competitive environment in 
which they operate; (2) enhance technology transfer and reduce the 
costs of transactions for patent rights since patent ownership 
information will be more readily and easily accessible; (3) reduce risk 
of abusive patent litigation by helping the public defend itself 
against such abusive assertions by providing more information about all 
the parties that have an interest in patents or patent applications; 
and (4) level the playing field for innovators.
    The Office is also seeking comments on whether the Office should 
enable patent applicants and owners to voluntarily report licensing 
offers and related information to the Office, which the Office will 
then make available to the public in an accessible online format. Such 
licensing information could include willingness to license, as well as 
licensing contacts, license offer terms, or commitments to license the 
patent, e.g., on royalty-free or reasonable and non-discriminatory 
terms. Further background and details about this request for comments 
are below.
    In order to engage the public and provide as much opportunity for 
feedback and input as possible, the Office intends to hold two 
stakeholder input meetings at which members of the public can provide 
comment to the Office on this proposal. These meetings will be held 
during the public comment period for this proposal, at times and 
locations to be determined. The Office will publicize the times and 
locations of these meetings through the Office's Internet Web site 
(https://www.uspto.gov).
    Summary of Major Provisions: The Office proposes collecting two 
basic types of attributable owner information: (1) Titleholders and (2) 
enforcement entities. If applicable, the attributable owner would also 
include the ultimate parent entity as defined in 16 CFR 801.1(a)(3) of 
either of these two reporting categories. The Office proposes adopting 
this ``ultimate parent entity'' definition rather than creating a new 
one to minimize the need for additional investigation and analysis of 
ownership structures. The Office also proposes that ``attributable 
owner'' include any entity that creates or uses any type of arrangement 
or device with the purpose or effect of temporarily divesting such 
entity of attributable ownership or preventing the vesting of such 
attributable ownership.
    The Office proposes that patent applicants identify the 
attributable owner or owners when an application is filed (or shortly 
thereafter), when attributable owner changes during the pendency of an 
application (within three months of such change), when the issue fee is 
due for an application that has been allowed, when a maintenance fee is 
due, and when a patent becomes involved in certain post-issuance 
proceedings at the Office, including in supplemental examination, ex 
parte reexamination, or a trial proceeding before the PTAB.
    The Office plans to work with its user community to implement this 
reporting system in a user-friendly manner and welcomes input on how 
this can best be accomplished. Subject to financial and resource 
constraints, the Office anticipates, in particular, developing a system 
for the electronic uploading and updating of attributable owner 
information, including bulk uploading and updating of attributable 
owner information when any ownership transfers occur. This type of 
reporting system will also allow applicants and patentees to indicate 
that the information the Office has on file is accurate at future 
checkpoints, such as at the time of maintenance fee payments.
    As with other procedural requirements of the Office, this proposal 
provides an applicant or patent owner with a means to correct omissions 
and

[[Page 4107]]

errors in the attributable owner information that has been reported. 
The notice also proposes to excuse good faith failures to notify the 
Office of the attributable owner or to provide correct or complete 
attributable owner information.
    The Office proposes to make the proposed rules applicable to all 
applications filed on or after the effective date of the final rule. 
For already-filed, pending applications, the Office proposes to require 
the reporting of attributable owner or owners when the issue fee is due 
(if and when such application has been allowed) provided that the 
notice of allowance is mailed on or after the effective date of the 
final rule. For already-issued patents, the Office proposes to require 
the reporting of attributable owner or owners when the next maintenance 
fee is paid, if the payment occurs on or after the effective date of 
the final rule. For any trial proceeding in which the petition was 
filed on or after the effective date of the final rule and any 
supplemental examination or ex parte reexamination in which the request 
was filed on or after the effective date of the final rule, the Office 
proposes to require the reporting of attributable owner or owners. The 
effective date of the final rule would be at least thirty days after 
publication of the final rule.
    While the Office would use attributable owner information for 
examination purposes in both published and unpublished applications, 
attributable owner information would be made available to the public 
for an application that has been published or issued as a patent.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: On June 4, 2013, the White House Task Force on High-
Tech Patent Issues published a paper detailing five executive actions 
and seven legislative recommendations ``to protect innovators from 
frivolous litigation and ensure the highest-quality patents in our 
system.'' Fact Sheet: White House Task Force on High-Tech Patent 
Issues, Legislative Priorities & Executive Actions. The first of the 
five executive actions calls for the Office to ``begin a rulemaking 
process to require patent applicants and owners to regularly update 
ownership information when they are involved in proceedings before the 
[Office], specifically designating the `ultimate parent entity' in 
control of the patent or application.'' Id.
    With this notice of proposed rulemaking, the Office is proposing 
changes designed to increase transparency by collecting ownership 
information of not just the titleholder (e.g., assignee), but also 
entities that are real-parties-in-interest because of their right to 
enforce an issued patent, as well as information about the entities who 
ultimately control these entities (i.e., the ``ultimate parent 
entities''). The proposed rule is designed to collect information both 
during the application process and at certain times after a patent 
issues, and thus will affect both patent applicants and holders of 
issued patents.
    Before the White House initiatives were announced on June 4, 2013, 
the Office had begun the process of considering whether and how to 
collect assignment or real-party-in-interest information (referred to 
herein as the ``attributable owner'') with a request for comments in 
2011 and a roundtable held at the Office in January 2013. Request for 
Comments on Eliciting More Complete Patent Assignment Information, 76 
FR 72372 (Nov. 23, 2011) (2011 Request for Comments); Notice of 
Roundtable on Proposed Requirements for Recordation of Real Party-in-
Interest Information Throughout Application Pendency and Patent Term, 
77 FR 70385 (Nov. 26, 2012) (2012 Roundtable Notice). The 2012 
Roundtable Notice reiterated that the Office was considering 
promulgating regulations that would require reporting of real-party-in-
interest information during the application process and at certain 
times post-issuance and invited further public input. The Roundtable, 
which was open to any member of the public, was held on Friday, January 
11, 2013. Details on the comments received from organizations and 
individuals can be found at https://www.uspto.gov/ip/officechiefecon/roundtable_01-11-2013.jsp.
    As set forth in the Roundtable Notice, having accurate and up-to-
date attributable owner information will facilitate patent examination 
and other parts of the Office's internal processes. As courts have 
previously recognized, the Office has the authority to promulgate 
regulations that ``shall govern the conduct of proceedings in the 
Office.'' Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1282 (Fed. Cir. 
2005) (quoting 35 U.S.C. 2(b)(2)); see also Cooper Techs. Co. v. Dudas, 
536 F.3d 1330, 1335 (Fed. Cir. 2008) (``To comply with section 
2(b)(2)(A), a Patent Office rule must be `procedural'--i.e., it must 
`govern the conduct of proceedings in the Office.' ''). Pursuant to 
this authority, the Office may require the submission of information 
that is reasonably necessary to proper examination or treatment of the 
matter at hand, provided that such requests are not arbitrary or 
capricious. See Star Fruits, 393 F.3d at 1283-84.
    To this end, the Office seeks attributable owner information to 
ensure that a ``power of attorney'' is current in each application or 
each patent involved in a proceeding before the Office. The Office has 
a clear interest in ensuring that current representatives in any 
proceeding before the Office are authorized by the current owner of the 
application or patent. See Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. 
Cir. 2006) (``[T]he PTO has broad authority to govern the conduct of 
proceedings before it and to govern the recognition and conduct of 
attorneys.'' Moreover, the Leahy-Smith America Invents Act, Public Law 
112-29 (2011) (``AIA'') amended 35 U.S.C. 118 to provide that an 
application for patent may be filed by the assignee or person to whom 
the inventor is under an obligation to assign the invention. See Public 
Law 112-29, 125 Stat. 283, 296 (2011).
    In addition, it is important for the Office to know the 
attributable owner of each application or each patent involved in a 
proceeding before the Office in order to avoid potential conflicts of 
interest for Office personnel. This problem has been identified during 
the adoption of regulations for the PTAB. For example, ``in the case of 
the Board, a conflict would typically arise when an official has an 
investment in a company with a direct interest in a Board proceeding. 
Such conflicts can only be avoided if the parties promptly provide 
information necessary to identify potential conflicts.'' Rules of 
Practice for Trials Before the Patent Trial and Appeal Board and 
Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 
48612, 48617 (Aug. 14, 2012). Like administrative patent judges at the 
PTAB, ``[p]atent examiners are quasi-judicial officials.'' Western 
Elec. Co., Inc. v. Piezo Tech., Inc., 860 F.2d 428, 431 (Fed. Cir. 
1988) (citing Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 67 
(1884)). Office employees are also subject to executive branch 
regulations that govern conflicts of interest in certain cases where 
employees have threshold financial interests in matters before them. 
See 5 CFR 2640.202(a); see also 18 U.S.C. 208. Accordingly, a clear 
identification of the attributable owner is important to ensure that 
officials are able to recuse themselves.
    There are recent trends towards greater liquidity in the markets 
for patent-related intellectual property. See, e.g., U.S. Dept. of 
Justice & Fed. Trade Comm'n, The Evolving IP Marketplace: Aligning 
Patent Notice and Remedies

[[Page 4108]]

with Competition, at 37-39 (2011) (``FTC Report'') (discussing the 
increasing importance of technology transfer from small, specialized 
firms to manufacturing firms and from large companies to spin-offs). 
Thus, the Office has a corresponding need for more regular ownership 
reporting and updating requirements for the Office's internal function. 
In particular, having such accurate and up-to-date attributable owner 
information will help the Office determine whether current 
representatives in any proceeding before the Office are authorized by 
the current applicant or owner. Likewise, having such attributable 
owner information will facilitate the Office's efforts to ensure that 
applicable conflict-of-interest provisions for Office personnel are 
followed.
    Facilitating greater transparency of patent application and patent 
ownership is also an important part of the Office's ongoing efforts to 
modernize patent examination and to improve patent quality. Recent 
changes in title 35 under the AIA have expanded the role of ownership 
as part of determining what constitutes prior art. See 35 U.S.C. 
102(b). In particular, 35 U.S.C. 102(b)(2)(C) (2011) exempts as prior 
art those patent applications or issued patents that name different 
inventors where ``the subject matter disclosed and the claimed 
invention, not later than the effective filing date of the claimed 
invention, were owned by the same person or subject to an obligation of 
assignment to the same person.'' Because ownership of an earlier-filed 
patent application or issued patent may prevent its use as prior art 
against a later-filed patent application, patentability may depend not 
just on the content of the prior art patent application or issued 
patent, but also on who owns it.
    35 U.S.C. 102(b)(2)(C) (2011) differs from the previous statutory 
provision on which it was based (pre-AIA 35 U.S.C. 103(c)(1)). While 
pre-AIA 35 U.S.C. 103(c)(1) concerned an exception to obviousness 
rather than an exception to what constitutes prior art, it otherwise 
recited virtually identical language to that of the 35 U.S.C. 
102(b)(2)(C) (2011), except that pre-AIA 35 U.S.C. 103(c)(1) stated 
that patentability was not precluded where ``the subject matter and the 
claimed invention were, at the time the claimed invention was made, 
owned by the same person or subject to an obligation of assignment to 
the same person.'' Under pre-AIA 35 U.S.C. 103(c)(1), whether earlier 
subject matter was prior art was established at the time when the 
claimed invention in the later-filed application was ``made,'' by 
considering whether the earlier subject matter was owned by the same 
entity that owned (or had a right to own) the claimed invention that 
was just made. In contrast, under 35 U.S.C. 102(b)(2)(C) (2011), there 
may be an opportunity--in the period before the filing of the second 
application--for ownership to change in a way that affects whether the 
earlier patent or patent application is prior art for purposes of 35 
U.S.C. 102(a)(2) (2011).
    In the prosecution context, 35 U.S.C. 102(b)(2)(C) (2011) presents 
the possibility that a greater amount of prior art might be subject to 
this exemption than under pre-AIA 35 U.S.C. 103(c)(1), which, in turn, 
could render the current method of handling the possibility of common 
ownership under MPEP 706.02(l)(2) (the examiner presenting an initial 
rejection, and the applicant rebutting the rejection with proof of 
ownership) inefficient in a manner contrary to the principles of 
compact prosecution as explained in MPEP 706 (``The goal of examination 
is to clearly articulate any rejection early in the prosecution process 
so that the applicant has the opportunity to provide evidence of 
patentability and otherwise reply completely at the earliest 
opportunity.''). Accordingly, tracking attributable owner information 
for patent applications and issued patents is directly relevant to 
questions of whether a claimed invention is patentable over the prior 
art during prosecution.
    Moreover, the availability of new types of third-party proceedings 
that may be filed with the Office, including inter partes review under 
35 U.S.C. 311 et seq. and post-grant review under 35 U.S.C. 321 et 
seq., has created a need for the Office to collect and publish timely 
ownership information. Because of certain statutory deadlines imposing 
short time frames for action (e.g., nine months after patent grant (35 
U.S.C. 321(c)), it may often be impractical or impossible for third 
parties to discover ownership information through other means, such as 
through litigation between patent owners and third parties that would 
provide for discovery of such information. As discussed previously, 
ownership information may be relevant in determining the scope of prior 
art. Accordingly, providing accurate and up-to-date ownership 
information to the public is important to facilitate these post-
issuance proceedings. In addition, requiring updated ownership 
information during post-issuance proceedings will facilitate 
examination for the same reasons discussed previously for examination 
of applications.
    Accordingly, having updated ownership information would allow the 
Office to: (1) Verify that a bona fide third party is making the 
request for inter partes review or post-grant review, as required by 35 
U.S.C. 311(a) and 321(a), respectively; (2) verify that the petitioner 
applying for review of a covered business method patent is a real-
party-in-interest or privy to an entity that has been sued or charged 
with infringement of that patent, as required by 37 CFR 42.302(a); and 
(3) verify that a bona fide patent owner is making the request for 
supplemental examination, as required by 35 U.S.C. 257(a).
    Finally, because the Office publishes information it possesses 
related to an application or patent (subject to 35 U.S.C. 122), the 
Office has an interest in ensuring that such information is not 
misleading. The Office currently receives (and publishes) only 
assignment information that is voluntarily submitted by the applicant 
or patent owner. There is no requirement that changes in assignment 
information be updated, though current law protects against certain 
types of fraud if such updating occurs. See 35 U.S.C. 261. Consequently 
the information the Office has on file may be outdated, which may be 
misleading to the public. Ensuring that the Office can provide 
information to the public that is not misleading is consistent with 
several statutory provisions directing the Office to disseminate 
information to the public as well as those directing the Office to 
provide access to information through electronic means. See 35 U.S.C. 
2(a)(2) (creating a duty of ``disseminating to the public information 
with respect to patents''); 10(a)(4) (providing for publication of 
information, including ``annual indexes of . . . patentees''); 10(b) 
(allowing the Director to publish the specified information set forth 
in [item (4)] of subsection 35 U.S.C. 10(a) of this section in a 
publication format ``desirable for the use of the Office'') and 41(i) 
(creating a duty to provide access to information electronically).
    Beyond providing these benefits to the Office, collecting 
attributable owner information and making it publicly available may 
have other potential benefits. In particular, collecting attributable 
owner information and making it publicly available may: (1) Enhance 
competition and increase incentives to innovate by providing innovators 
with information that will allow them to better understand the 
competitive environment in which they operate; (2) enhance technology 
transfer and reduce the costs of transactions for

[[Page 4109]]

patent rights since patent ownership information will be more readily 
and easily accessible; (3) reduce risk of abusive patent litigation by 
helping the public defend itself against such abusive assertions by 
providing more information about all the parties that have an interest 
in patent or patent applications; and (4) level the playing field for 
innovators.
    Regarding enhanced competition and increased incentives to 
innovate, easier access to accurate and up-to-date attributable owner 
information will provide innovators with information to better 
understand the competitive environment in which they operate. This will 
enable them to better assess, for example, the risks and benefits of 
developing a new business in a different area of technology, thereby 
allowing them to allocate their limited research and development 
resources more judiciously. Chapters 1 and 2 of the FTC Report discuss 
at length the advantages of ex-ante versus ex-post licensing. By 
providing the public with more and better information about ownership 
of patent rights earlier (particularly in advance of product launch and 
filling of distribution channels), innovators will be better positioned 
to seek rights ex-ante rather than ex-post, should they so desire.
    Regarding enhancing technology transfer and reducing the costs of 
transactions for patent rights, providing easy access to accurate and 
up-to-date attributable owner information to the public is expected to 
reduce information and search costs associated with identifying and 
then licensing or buying patent assets.
    With regard to reducing abusive patent litigation, developing a 
record of attributable owners will help accused patent infringers 
identify: (i) The parties who control and/or influence the ability to 
enter into a settlement agreement or licensing arrangement; and (ii) 
the full range of patent rights held by the attributable owners so that 
a license to all desired rights may be taken at once. This point is 
also reflected in the White House's Fact Sheet: White House Task Force 
on High-Tech Patent Issues, Legislative Priorities & Executive Actions 
(June 4, 2013), which notes that certain patent enforcement entities 
``set up shell companies to hide their activities'' and this ``tactic 
prevents those facing litigation from knowing the full extent of the 
patents that their adversaries hold.'' Accord, United States Government 
Accountability Office, Intellectual Property: Assessing Factors That 
Affect Patent Infringement Litigation Could Help Improve Patent 
Quality, available at https://www.gao.gov/products/GAO-13-465 (2013) 
(reporting that patent holders sometimes ``intentionally hide the 
existence of their patents until a sector or company are using the 
patented invention without authorization and can be sued for 
infringement,'' and in some lawsuits, ``the identity of interested 
operating companies is intentionally hidden.'' (pp. 20, 31)). 
Furthermore, providing the public with access to updated attributable 
owner information may help accused infringers determine whether a 
patent or application may be subject to fair, reasonable, and non-
discriminatory (FRAND) licensing commitments.
    Request for Comments on the Voluntary Submission of Licensing 
Information: The Office is also seeking public comment on enabling 
patent applicants and owners to voluntarily report licensing offers and 
related information for the Office to make available to the public. The 
Office currently permits patent owners to request that their patents be 
listed in the Official Gazette as available for license or sale, upon 
payment of the fee set forth in 37 CFR 1.21(i). See MPEP 1703. For 
examples of such listings, see (https://www.uspto.gov/web/offices/com/sol/og/2012/week02/TOC.htm#ref18) (Jan. 10, 2012) and (https://www.uspto.gov/web/offices/com/sol/og/patlics.htm) (Dec. 11, 2007). The 
Office seeks public comment on whether the Office should also, or 
alternatively, permit patent applicants and owners to voluntarily 
provide information about licensing for the Office to make available to 
the public in, for example, a searchable online database or Public 
PAIR. Such licensing information could include willingness to license, 
as well as licensing contacts, license offer terms, or commitments to 
license the patent, e.g., on royalty-free or reasonable and non-
discriminatory terms. In accordance with best practices in technology 
transfer, this information could also include permitting a patent 
applicant or owner to include keywords, technical fields, and/or 
descriptive information about the underlying technology, related 
technical papers and publications, and desired attributes in a 
technology partner (see, e.g. https://www.federallabs.org/).
    The Office believes that the implementation of such a voluntary 
program would further enhance the transparency and efficiency of the 
marketplace for patent rights by providing a clearinghouse for patent 
holders to post licensing terms. Such a system would be expected to 
further enhance technology transfer and reduce the costs of 
transactions for patent rights. The World Intellectual Property 
Organization (WIPO) has offered a similar option to report licensing 
terms and information to PCT applicants since January 2012, in order to 
promote voluntary licensing. In November 2013, it introduced the WIPO 
GREEN online marketplace, to promote innovation and diffusion of green 
technologies. (https://webaccess.wipo.int/green/).
    Attributable Owner Information To Be Collected: The Office is 
proposing that the attributable owner be identified on filing (or 
shortly thereafter), when there is a change of attributable owner 
during the pendency of an application, at the time of issue fee and 
maintenance fee payments, and when a patent is involved in supplemental 
examination, ex parte reexamination, or a trial proceeding before the 
Patent Trial and Appeal Board (PTAB). The Office proposes to collect 
two basic types of attributable owner information: (1) Titleholders and 
(2) enforcement entities. The attributable owner would also include the 
ultimate parent entity as defined in 16 CFR 801.1(a)(3) of either of 
these two types of attributable owner. In addition, any entity that 
creates or uses any type of arrangement or device with the purpose or 
effect of temporarily divesting such entity of attributable ownership 
or preventing the vesting of such attributable ownership would also be 
considered an attributable owner. Each of the attributable owner types 
and corresponding ``ultimate parent entity'' are discussed in greater 
detail as follows.
    In many cases, these types of ownership interests may be 
coextensive. Specifically, the titleholder (or assignee) is often the 
same entity that has the right to enforce the patent, and is not 
controlled by any other entity (and so would not have to separately 
report an ultimate parent entity). 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. Some of this additional reporting may include exclusive 
licensees. Although exclusive licensees are sometimes confidential now, 
they would only need to be disclosed where their rights are so 
substantial that they have enforcement rights in the patent. In such 
circumstances, the public has a strong interest in knowing their 
identities in order to have an accurate picture of the competitive 
patent landscape, to allocate their research and development efforts 
appropriately, and to take licenses or purchase patents proactively and 
efficiently from the

[[Page 4110]]

correct entities, as dictated by business needs.
    The Office proposes to collect this attributable owner information 
from applicants and patent owners, and invites public comments as to 
whether and when additional attributable owner information should be 
collected as well as whether changes could be made to the scope of the 
information proposed to be collected while still achieving the 
objectives of the Office set forth in this document.
    The Office is proposing to require disclosure of the following 
ownership interests:
    1. Titleholders: The first type of attributable owner information 
the Office proposes to collect is comprised of the titleholder(s) of 
the patent application or issued patent. Titleholders are defined as an 
entity that has been assigned title to the patent or application. This 
proposed requirement overlaps with the information that applicant and 
patent owners currently may voluntarily submit for assignment 
recordation at the Office. Reporting of exclusive licensees might be 
required in the limited circumstances where the exclusive license 
transfers so many rights that it is effectively an assignment, but the 
Office expects that exclusive licensee information would more routinely 
be reported under the second type of ownership information the Office 
proposes to collect (entities that have standing to enforce). See, 
e.g., Alfred C. Mann Found. v. Cochlear Corp., 604 F.3d 1354, 1360-61 
(Fed. Cir. 2010).
    2. Enforcement Entities: The second type of attributable owner 
information the Office proposes to collect is comprised of those 
entities not already identified as titleholders, but who are necessary 
to be joined in a lawsuit in order to have standing to enforce the 
patent or any patent resulting from the application. The entities 
having the legal right to enforce the patent refers to those parties 
that would be necessary and sufficient to bring a legal infringement 
action. See Vaupel Textilmaschinen KG v. Meccanica EuroItalia SPA, 944 
F.2d 870, 875-76 (Fed. Cir. 1991). This proposed reporting requirement 
would require disclosure of exclusive licensees in certain cases.
    Ultimate Parent Entities: Information required to be reported for 
each type of attributable owner would also include identification of 
the ultimate parent entity, i.e., the entity that ultimately controls 
the actions of any entities discussed previously, if they are not their 
own ultimate parents. The term ``ultimate parent entity'' is defined by 
reference to the definition (an entity which is not controlled by any 
other entity) along with the accompanying examples set forth in 16 CFR 
801.1(a)(3). The Office is proposing incorporation by reference of the 
definition of ultimate parent entity in 16 CFR 801.1(a)(3) but would 
welcome comments on how this definition might be modified for use at 
the Office. The Office recognizes that corporations sometimes transfers 
patents and patent applications within the corporation for legitimate 
reasons, such as tax savings purposes, and also welcomes comments on 
the impact of the proposed changes on this practice.
    Hidden Beneficial Owners: Information required to be reported would 
also include identification of entities that are trying to avoid the 
need for their disclosure by temporarily divesting themselves of 
ownership rights through contractual or other arrangements. The Office 
deems the beneficiaries of these temporarily divested rights to be 
attributable owners. The Office seeks to have a complete picture of the 
attributable owners for the numerous reasons detailed in this document, 
and this provision is designed to discourage intentional shielding of 
such ownership interests.
    As discussed previously, the Office expects that this information 
will facilitate the Office's core function of examining patents. All of 
the ownership interests outlined previously will help the Office to 
avoid potential conflicts of interest, as required by regulation and 
statute, and the quasi-judicial roles of patent examiners. For example, 
the attributable owner information would allow Office employees to 
evaluate whether they own stock in companies that are appearing before 
them in patent examination or other Office proceedings. The related 
ultimate parent entity information would serve as an additional check 
to the extent that Office employees might not be aware of subsidiaries 
owned by companies in which they might own stock.
    Information about the titleholder and its ultimate parent entity 
will also help the Office to determine the scope of prior art under the 
common ownership exception under 35 U.S.C. 102(b)(2)(C), to uncover 
instances of double patenting, and ensure that the power of attorney is 
current in applications under examination. The ultimate parent entity 
information in particular would facilitate searching by providing a 
common identifier for companies that have many subsidiaries that 
nominally hold title to the application or patent.
    The Office plans to publish information about attributable owners 
in accordance with its duty to provide information to the public, 35 
U.S.C. 2(a)(2), although such information will be made available only 
in accordance with 35 U.S.C. 122. The Office expects that the public 
provision of attributable owner information will increase transparency 
of the patent system, as outlined in the background section of this 
document.
    The Office is proposing the following timing and handling of 
disclosures:
    Timing of Attributable Owner Information Collection: For the 
purposes discussed previously, the Office proposes to collect 
information at the following points during prosecution and post-
issuance so that the Office will have access to accurate and up-to-date 
information and will be able to provide such information to the public.
    During Patent Prosecution: The Office proposes the following 
attributable owner reporting requirements for pending applications: (1) 
Application Filing Requirement: The applicant would be required to 
identify the attributable owner at the time a patent application is 
initially filed (or shortly thereafter); (2) Update Requirement: The 
applicant would be required to identify a new attributable owner during 
prosecution within three months of any change in attributable owner; 
and (3) Issue Fee Payment Requirement: The applicant would be required 
to identify the attributable owner (or verify that the attributable 
owner information currently on record at the Office is correct) at the 
time of issue fee payment. The requirement to identify the attributable 
owner would not apply to provisional applications, and would not apply 
to international applications prior to the commencement of the national 
stage in the United States. The Office welcomes comments on whether 
there are other times during prosecution (e.g., with each reply to an 
Office action) where updating or verification of attributable owner 
information should be required, and on whether within three months of 
any change in attributable owner is the appropriate time frame (i.e., 
should the time frame be more or less than three months?).
    After Patent Issuance: The Office proposes the following 
attributable owner reporting requirements for issued patents: (1) 
Maintenance Fee Requirement: The patent owner would be required to 
identify the attributable owner (or verify that the attributable owner 
information currently on record at the Office is correct) at the time 
each maintenance fee is paid; and (2) Post-Issuance Proceeding 
Requirement: The patent owner would be required to identify the 
attributable owner (or verify

[[Page 4111]]

that the attributable owner information currently on record at the 
Office is correct) at the time the patent becomes involved in certain 
post-issuance proceedings before the Office, including (1) any trial 
proceeding before the PTAB, such as any post grant review under 35 
U.S.C. 321, inter partes review under 35 U.S.C. 311, covered business 
method patent review under section 18 of the AIA, or derivation 
proceeding under 35 U.S.C 135; (2) any request for supplemental 
examination under 35 U.S.C. 257(a); and (3) any ex parte reexamination 
proceeding under 35 U.S.C. 302.
    Provision of Attributable Owner Information to the Public: While 
the Office would use attributable owner information for examination 
purposes in both published and unpublished applications, attributable 
owner information would be made available to the public in an 
application that has been published under 35 U.S.C. 122(b) or issued as 
a patent under 35 U.S.C. 151. The Office anticipates providing 
information about the current attributable owner, as well as a history 
of any attributable owner changes, in an accessible electronic format, 
such as via the public side of the Patent Application Information 
Retrieval (PAIR) system.

Discussion of Specific Rules

    The following is a discussion of proposed amendments to title 37 of 
the Code of Federal Regulations, Part 1:
    Section 1.17: Section 1.17(g) is proposed to be amended to include 
a reference to proposed Sec. Sec.  1.279 and 1.387. Sections 1.279 and 
1.387 as proposed provide for a petition and the petition fee set forth 
in Sec.  1.17(g) if the applicant or patent owner has failed to notify 
the Office of a change to the attributable owner, or has indicated an 
incorrect or an incomplete attributable owner, despite a good faith 
effort to comply with these requirements.
    Section 1.271: Section 1.271 as proposed defines the entity or 
entities that are covered by the term ``attributable owner'' as that 
term is used in the rules of practice. Section 1.271(a) as proposed 
specifically provides that the attributable owner includes each of the 
following entities: (1) An entity that, exclusively or jointly, has 
been assigned title to the patent or application (proposed Sec.  
1.271(a)(1)); 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 (proposed Sec.  1.271(a)(2)).
    Section 1.271(b) as proposed provides that 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 Sec.  1.271(a). 
The ultimate parent entity is an entity which is not controlled by any 
other entity. 16 CFR 801.1(a) provides the following illustrative 
examples for identifying the ultimate parent entity: ``(1) If 
corporation A holds one hundred percent of the stock of subsidiary B, 
and B holds seventy-five percent of the stock of its subsidiary C, 
corporation A is the ultimate parent entity, since it controls 
subsidiary B directly and subsidiary C indirectly, and since it is the 
entity within the person which is not controlled by any other entity; 
(2) if corporation A is controlled by natural person D, natural person 
D is the ultimate parent entity; and (3) if P and Q are the ultimate 
parent entities within persons `P' and `Q,' and P and Q each own fifty 
percent of the voting securities of R, then P and Q are both ultimate 
parents of R, and R is part of both persons `P' and `Q.' ''
    With regard to the definition of ``ultimate parent entity'' as ``an 
entity which is not controlled by any other entity,'' 16 CFR 801.1(b) 
defines ``control'' as follows: The term control (as used in the terms 
control(s), controlling, controlled by and under common control with) 
means: (1) Either (i) holding fifty percent or more of the outstanding 
voting securities of an issuer, or (ii) in the case of an 
unincorporated entity, having the right to fifty percent or more of the 
profits of the entity, or having the right in the event of dissolution 
to fifty percent or more of the assets of the entity; or (2) having the 
contractual power presently to designate fifty percent or more of the 
directors of a for-profit or not-for-profit corporation, or in the case 
of trusts that are irrevocable and/or in which the settlor does not 
retain a reversionary interest, the trustees of such a trust. 16 CFR 
801.1(b) further provides a number of illustrative examples for 
identifying the ultimate parent entity based upon its definition of 
``control.''
    Section 1.271(c) as proposed provides that 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 Sec.  1.271 to be an 
attributable owner of such patent or application.
    Section 1.271(d) as proposed defines the term ``entity'' used in 
Sec.  1.271. Section 1.271(d) as proposed specifically provides that 
the term ``entity'' used in Sec.  1.271 includes: (1) Any natural 
person, corporation, company, partnership, joint venture, association, 
joint-stock company, trust, estate of a deceased natural person, 
foundation, fund, or institution, whether incorporated or not, wherever 
located and of whatever citizenship (proposed Sec.  1.271(d)(1)); (2) 
any receiver, trustee in bankruptcy or similar official or any 
liquidating agent for any of the entities described in Sec.  
1.271(d)(1), in his or her capacity as such (proposed Sec.  
1.271(d)(2)); (3) a joint venture or other corporation which has not 
been formed but the acquisition of the voting securities or other 
interest in which, if already formed, would be an attributable owner as 
described in this section (proposed Sec.  1.271(d)(3)); or (4) any 
other organization or corporate form not specifically listed in Sec.  
1.271(d)(1), (d)(2), or (d)(3) that holds an interest in an application 
or patent (proposed Sec.  1.271(d)(4)). Section 1.271(d) as proposed 
(in combination with the exception in proposed Sec.  1.271(e)) tracks 
the definition of entity in 16 CFR 801.1(a)(2).
    Section 1.271(e) as proposed provides an ``exception'' to the term 
``entity'' as used in Sec.  1.271. Section 1.271(e) as proposed 
specifically provides that, notwithstanding the provisions of Sec.  
1.271(c), the term ``entity'' does not include any foreign state, 
foreign government, or agency thereof (other than a corporation or 
unincorporated entity engaged in commerce), and also does not include 
the United States, any of the States thereof, or any political 
subdivision or agency of either (other than a corporation or 
unincorporated entity engaged in commerce).
    Section 1.271(f) as proposed sets out the information concerning an 
entity that must be provided when that entity is being identified as an 
attributable owner. Section 1.271(f) as proposed specifically provides 
that when there is a requirement to identify the attributable owner, 
each entity constituting the attributable owner must be identified as 
follows: (1) The identification of a public company must include the 
name of the company, stock symbol, and stock exchange where the company 
is listed (proposed Sec.  1.271(f)(1)); (2) the identification of a 
non-public company must include the name of the company, place of 
incorporation, and address of the principal place of business (proposed 
Sec.  1.271(f)(2)); (3) the identification of a partnership must 
include the name of the partnership and address of the principal place 
of business (proposed Sec.  1.271(f)(3)); (4) the identification of a

[[Page 4112]]

natural person must include the full legal name, residence, and a 
correspondence address (proposed Sec.  1.271(f)(4)); and (5) the 
identification of any other type of entity must include its name, if 
organized under the laws of a state, the name of that state and legal 
form of organization, and address of the principal place of business 
(proposed Sec.  1.271(f)(5)).
    Section 1.271(g) is proposed to clarify that a shareholder or 
partner in a corporate form, partnership, or other association (except 
for shareholders of a public company) must also be identified as an 
attributable owner if the shareholder or partner meets one of the 
definitions set forth in Sec.  1.271(a), (b), or (c), even if the a 
corporate form, partnership, or other association is separately 
identified as an attributable owner.
    Section 1.273: Section 1.273 as proposed requires the applicant to 
identify the attributable owner (the ``initial'' attributable owner) on 
filing or within the time period provided in Sec.  1.53(f) (provides 
for the completion of an application under 35 U.S.C. 111(a) for 
examination) or Sec.  1.495(c) (provides for the submission of missing 
requirements in an international application that commenced the 
national stage under 35 U.S.C. 371). Section 1.273 as proposed 
specifically provides that the attributable owner must be identified in 
each application under 35 U.S.C. 111(a), including a reissue 
application, and in each international application that commenced the 
national stage under 35 U.S.C. 371(b) or (f). The requirements of 
proposed Sec.  1.273 would not apply to provisional applications under 
35 U.S.C. 111(b), and would not apply to international applications 
prior to the commencement of the national stage under 35 U.S.C. 371(b) 
or (f). Section 1.273 as proposed also provides that if an application 
under 35 U.S.C. 111(a) which has been accorded a filing date pursuant 
to Sec.  1.53(b) or (d) does not identify the attributable owner, or if 
an international application which complies with Sec.  1.495(b) does 
not identify the attributable owner, the applicant will be notified and 
given a period of time within which to file a notice identifying the 
attributable owner to avoid abandonment. Section 1.273 as proposed also 
provides that the notice by the Office under Sec.  1.273 may be 
combined with a notice under Sec.  1.53(f) (providing for the 
completion of an application under 35 U.S.C. 111(a) for examination) or 
Sec.  1.495(c) (providing for the filing of missing requirements in an 
international application that commenced the national stage under 35 
U.S.C. 371). Thus, the applicant must identify the attributable owner 
on filing or in reply to a notice setting a time period within which 
the attributable owner must be identified. The Office generally issues 
a notice under Sec.  1.53(f) (if necessary) within one to two months of 
the filing date of an application and sets a two-month time period for 
an applicant to comply with the requirements in the notice under Sec.  
1.53(f). The two-month time period for an applicant to comply with the 
requirements in the notice under Sec.  1.53(f) may be extended under 
Sec.  1.136(a) by up to five months. Thus, this process would permit an 
applicant up to eight months from the filing date of an application to 
provide the attributable ownership information. The failure to identify 
the attributable owner within the time period set under Sec.  1.273 
would result in abandonment of the application. An applicant would be 
able to revive an application abandoned for failure to identify the 
attributable owner within the time period set under Sec.  1.273 under 
the provisions of Sec.  1.137, provided that the failure to identify 
the attributable owner was unintentional.
    The Office is proposing making this requirement applicable to 
applications under 35 U.S.C. 111(a) filed on or after the effective 
date of the final rule and to international applications that commenced 
the national stage under 35 U.S.C. 371(b) or (f) on or after the 
effective date of the final rule.
    Section 1.275: Section 1.275 as proposed addresses the procedure to 
be followed if there is a change in attributable owner during the 
pendency of an application under 35 U.S.C. 111(a) or the pendency of an 
international application which complies with Sec.  1.495(b). The 
requirements of proposed Sec.  1.275 would not apply to provisional 
applications under 35 U.S.C. 111(b), and would not apply to 
international applications prior to the commencement of the national 
stage under 35 U.S.C. 371(b) or (f). Section 1.275 as proposed 
specifically provides that if there is such a change during the 
pendency of an application, the applicant has three months (non-
extendable) from the date of the change to the attributable owner 
within which to file a notice identifying the current attributable 
owner.
    The Office is proposing making this requirement applicable to 
applications under 35 U.S.C. 111(a) filed on or after the effective 
date of the final rule and to international applications that commenced 
the national stage under 35 U.S.C. 371(b) or (f) on or after the 
effective date of the final rule.
    Section 1.277: Section 1.277 as proposed requires applicants to 
confirm that attributable owner information on record at the Office is 
accurate, or to provide updated information. Section 1.277 as proposed 
specifically provides if a notice of allowance under Sec.  1.311 has 
been sent to the applicant, and if the attributable owner information 
on record at the Office is no longer correct, that the applicant must 
file a notice identifying the current attributable owner within three 
months (non-extendable) from the date of the mailing of the notice of 
allowance. If the attributable owner information on record at the 
Office is still correct, applicants can simply confirm that there have 
been no changes. To this end, the Office plans to provide a checkbox on 
the notice of allowance (PTOL-85b) (or checkbox via the electronic 
filing system) so that if the information on record at the Office 
remains correct, an applicant may simply check a box to so indicate. 
The failure to either update or confirm within three months (non-
extendable) from the date of mailing of the notice of allowance would 
result in abandonment of the application. An applicant would be able to 
revive an application abandoned for failure to complete this action 
under the provisions of Sec.  1.137, provided that the failure was 
unintentional.
    The Office is proposing making this requirement applicable to 
applications in which a notice of allowance under 35 U.S.C. 151 and 
1.311 is mailed on or after the effective date of the final rule.
    Section 1.279: Section 1.279 as proposed provides for the situation 
in which the applicant has failed to notify the Office of a change to 
the attributable owner, or has indicated an incorrect or an incomplete 
attributable owner, despite a good faith effort to comply with these 
requirements. Section 1.279 as proposed specifically provides that if, 
despite a good faith effort by the applicant to notify the Office of 
the initial attributable owner, and of any changes to the attributable 
owner, in the manner required by Sec. Sec.  1.273, 1.275, and 1.277, 
the failure or error may be excused in a pending application on 
petition accompanied by a showing of reason for the delay, error, or 
incompleteness and the petition fee set forth in Sec.  1.17(g).
    Section 1.279 as proposed is limited to excusing failure or errors 
in a pending application. Where there has been a failure to identify 
the attributable owner within the time period set under Sec.  1.273, or 
after mailing the notice of allowance, a failure either to confirm that 
the information on file at the Office is correct, or to identify the 
current

[[Page 4113]]

attributable owner within three months (non-extendable) from the date 
of mailing under Sec.  1.277, that has resulted in abandonment of an 
application, the applicant's remedy (if the failure was unintentional) 
is by way of a petition to revive the abandoned application under the 
provisions of Sec.  1.137.
    Section 1.381: Section 1.381 as proposed provides for a patent 
holder to either: (1) Identify the current attributable owner prior to 
each maintenance fee payment; or (2) confirm prior to each maintenance 
fee payment that there has been no change to the attributable owner 
information most recently provided to the Office. Section 1.381 as 
proposed specifically provides that a notice identifying the current 
attributable owner must be filed within the period specified in Sec.  
1.362(d) or (e), but prior to the date the maintenance fee is paid, for 
each maintenance fee. Section 1.381 as proposed does not require that 
the notice be provided concurrently with the maintenance fee payment as 
the Office appreciates that maintenance fee payments are often provided 
as bulk payments in an automated fashion by a third party. Rather, 
Sec.  1.381 as proposed provides a considerable ``window'' (within the 
six-month payment window in Sec.  1.362(d) or the six-month surcharge 
window in Sec.  1.362(e), but prior to the date the maintenance fee is 
paid) within which a notice identifying the current attributable owner 
must be provided. The Office welcomes comments on how to collect 
attributable owner information at the time of each maintenance fee, 
particularly in light of this practice of maintenance fee submission in 
bulk by third parties.
    Section 1.381 as proposed also provides that if there has been no 
change to the attributable owner information most recently provided to 
the Office, the notice may simply indicate that there has been no 
change. The Office plans to provide a means (automated or a pre-printed 
form) such that if the current attributable owner has been previously 
provided to the Office, the patent owner may simply check the box or 
submit a pre-printed form to indicate that there has been no change to 
the attributable owner. Thus, a patent owner who provides updated 
attributable owner information whenever there is a change to the 
attributable owner during the life of the patent may simply check the 
box or submit a pre-printed form to indicate that that there has been 
no change to the attributable owner.
    The Office is proposing making this requirement applicable to 
patents in which a maintenance fee is paid on or after the effective 
date of the final rule.
    Section 1.383: Section 1.383 as proposed requires the patent holder 
to identify the current attributable owner for any patents involved in 
a PTAB trial proceeding. Section 1.383 as proposed specifically 
provides that the mandatory notice filed by a patent owner as required 
by Sec.  42.8(a)(2) must also be accompanied by a notice identifying 
the current attributable owner. Section 42.8 requires that the 
petitioner and the patent owner each file a notice identifying (inter 
alia) each real party in interest owner for the party. See Sec.  
42.8(b)(1). Proposed Sec.  1.383 differs from the current requirement 
in Sec.  42.8 to identify each real party in interest in that proposed 
Sec.  1.383: (1) Requires identification of each attributable owner 
(defined in Sec.  1.271), rather than real party in interest; and (2) 
applies only to a patent owner. Section 1.383 as proposed further 
provides that if there is a change to the attributable owner during the 
pendency of the trial, the patent owner has twenty-one days (non-
extendable) from the date of the change within which to file a notice 
identifying the current attributable owner. Section 1.383 provides a 
twenty-one-day period, rather than a three-month period, for updating 
any changes in attributable owners for a patent involved in a PTAB 
proceeding because Sec.  42.8 requires that a notice must be filed with 
the Board within twenty-one days of a change in the information that is 
required to be in the mandatory notice. See 42.8(a)(3).
    The Office is proposing making this requirement applicable to any 
trial proceeding in which the petition was filed on or after the 
effective date of the final rule.
    Section 1.385: Section 1.385 as proposed requires a patent holder 
to identify the current attributable owner in a request for 
supplemental examination and during ex parte reexamination proceedings.
    Section 1.385(a) as proposed pertains to supplemental examination. 
Section 1.385(a) as proposed provides that a request for supplemental 
examination under Sec.  1.610 must also be accompanied by a notice 
identifying the current attributable owner. Thus, a request for 
supplemental examination would not be accorded a filing date unless it 
is accompanied by a notice identifying the current attributable owner. 
A request for supplemental examination may be filed only by the patent 
owner and a supplemental examination proceeding will not last longer 
than three months (35 U.S.C. 257(a)). Therefore, there are no 
provisions for a request for supplemental examination by a party other 
than the patent owner or for a change to the attributable owner during 
a supplemental examination.
    Section 1.385(b) as proposed pertains to a request for ex parte 
reexamination by the patent holder. Section 1.385(b) as proposed 
specifically provides that a request for ex parte reexamination under 
Sec.  1.510 by the patent holder must also be accompanied by a notice 
identifying the current attributable owner. Thus, a request for ex 
parte reexamination by the patent owner would not be accorded a filing 
date unless it is accompanied by a notice identifying the current 
attributable owner.
    Section 1.385(c) as proposed pertains to a request for ex parte 
reexamination in which the patent owner has not identified the current 
attributable owner because the request was filed by a third party 
rather than the patent holder. Section 1.385(c) as proposed 
specifically provides that a reply or any other paper filed by the 
patent holder in an ex parte reexamination proceeding must be 
accompanied by a notice identifying the current attributable owner, 
unless such a notice has previously been filed by the patent holder. 
Thus, a reply by the patent holder in an ex parte reexamination would 
be considered incomplete unless it is accompanied by a notice 
identifying the current attributable owner, or unless such a notice has 
previously been filed. The phrase ``unless such a notice has previously 
been filed by the patent owner'' covers the situations in which: (1) 
The request for ex parte reexamination was by the patent holder and the 
patent holder identified the current attributable owner in the request 
for ex parte reexamination; or (2) the current attributable owner was 
identified in a previous reply by the patent holder. Section 1.385(c) 
as proposed further provides that if there is a change to the 
attributable owner during the pendency of the reexamination proceeding, 
the patent holder has three months (non-extendable) from the date of 
the change to the attributable owner within which to file a notice 
identifying the current attributable owner.
    The Office is proposing making this requirement applicable to any 
supplemental examination or ex parte reexamination in which the request 
was filed on or after the effective date of the final rule.
    Section 1.387: Section 1.387 as proposed addresses the situation in 
which the patent holder has failed to notify the Office of a change to 
the attributable owner, or has indicated an incorrect or an incomplete 
attributable

[[Page 4114]]

owner, despite a good faith effort to comply with these requirements. 
Section 1.387 as proposed specifically provides that if, despite a good 
faith effort by the patent holder to notify the Office of the initial 
attributable owner, and of any changes to the attributable owner, in 
the manner required by Sec. Sec.  1.273, 1.275, 1.277, 1.381, 1.383, 
and 1.385, the failure or error may be excused on petition accompanied 
by a showing of reason for the delay, error, or incompleteness and the 
petition fee set forth in Sec.  1.17(g). Thus, proposed Sec.  1.387 
would be the applicable provision for corrections in an issued patent, 
regardless of whether the failure or error occurred during the 
application process (i.e., there was a failure to comply with 
Sec. Sec.  1.273, 1.275, or 1.277) or after the patent issued (i.e., 
there was a failure to comply with Sec. Sec.  1.381, 1.383, and 1.385).

Rulemaking Considerations

A. Administrative Procedure Act

    This document proposes to require that the attributable owner, 
including the ultimate parent entity, be identified during the pendency 
of a patent application and at specified times during the life of a 
patent. The changes in this rulemaking do not change the substantive 
criteria of patentability and also do not place any limits or 
conditions on the patent owner's ability to transfer ownership of, or 
any other interest in, a patent or patent application. Therefore, the 
changes proposed in this rulemaking involve rules of agency practice 
and procedure, and/or interpretive rules. See Bachow Commc'ns Inc. v. 
F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an 
application process are procedural under the Administrative Procedure 
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 
2001) (rules for handling appeals were procedural where they did not 
change the substantive standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See 
Cooper Techs, 536 F.3d at 1336-37 (Fed. Cir. 2008) (stating that 5 
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and 
comment rulemaking for ``interpretative rules, general statements of 
policy, or rules of agency organization, procedure, or practice'') 
(quoting 5 U.S.C. 553(b)(A)). The Office, however, is publishing all of 
these proposed changes as it seeks the benefit of the public's views on 
the Office's proposed implementation.

B. Initial Regulatory Flexibility Analysis

1. Description of the Reasons That Action By the Agency Is Being 
Considered
    The Office is proposing to amend the rules of patent practice to 
provide greater transparency concerning the ownership of pending patent 
applications and patents. The purpose of this rulemaking is to ensure 
the highest-quality patents, to facilitate patent examination at the 
Office, to enhance competition and increase incentives to innovate by 
providing innovators with information that will allow them to better 
understand the competitive environment in which they operate, enhance 
technology transfer and reduce the costs of transactions for patent 
rights by making patent ownership information more readily and easily 
available, to reduce risk of abusive patent litigation by helping the 
public defend itself against risk of abusive assertions by providing 
more information about the parties that have an interest in patents or 
patent applications, and to level the playing field for innovators.
2. Succinct Statement of the Objectives of, and Legal Basis for, the 
Proposed Rules
    The objective of the proposed rules is to provide greater 
transparency concerning the ownership of pending patent applications 
and patents to facilitate patent examination at the Office by requiring 
that the attributable owner, including the ultimate parent entity, be 
identified during the pendency of a patent application and at specified 
times during the life of a patent, and to further ensure that the 
ownership information the Office provides to the public is accurate and 
not misleading.
    The proposed changes to require patent applicants and patent owners 
to regularly update ownership information when the applicant or patent 
owner is involved in a proceeding before the Office will facilitate 
patent examination and other parts of the Office's internal processes 
by helping to: (1) Ensure that a ``power of attorney'' is current in 
each application or proceeding before the Office; (2) avoid potential 
conflicts of interest for Office personnel; (3) 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; (4) verify that 
the party making a request for a post-issuance proceeding is a proper 
party for the proceeding; and (5) ensure that the information the 
Office provides to the public concerning published applications and 
issued patents is accurate and not misleading.
    Beyond providing these benefits to the Office, collecting 
attributable owner information and making it available may: (1) Enhance 
competition and increase incentives to innovate by providing innovators 
with information to allow them to better understand the competitive 
environment in which they operate; (2) enhance technology transfer and 
reduce the costs of transactions for patent rights since patent 
ownership information will be more readily and easily accessible; (3) 
help the public defend itself against abusive patent assertion or 
litigation by providing more information about all the parties that 
have an interest in the patent or patent application; and (4) level the 
playing field for innovators.
    The legal basis for the proposed rules is 35 U.S.C. 2(b)(2), which 
authorizes the Office to establish regulations, not inconsistent with 
law, which ``govern the conduct of proceedings in the Office.'' 35 
U.S.C. 2(a)(2)(A); see also Star Fruits S.N.C., 393 F.3d at 1282 
(quoting 35 U.S.C. 2(b)(2)), and Cooper Techs., 536 F.3d at 1335 (``To 
comply with section 2(b)(2)(A), a Patent Office rule must be 
`procedural'--i.e., it must `govern the conduct of proceedings in the 
Office.' ''). Pursuant to this authority, the Office may require the 
submission of attributable owner information that is reasonably 
necessary to proper examination or treatment of the matter at hand, 
provided that such requests are not arbitrary or capricious. See Star 
Fruits, 393 F.3d at 1283-84.
    Further legal basis for the proposed rule comes from 35 U.S.C. 
2(a). Because the Office publishes information it possesses related to 
an application or patent (subject to 35 U.S.C. 122), the Office has an 
interest in ensuring that such information is not misleading. The 
Office currently receives (and publishes) only assignment information 
that is voluntarily submitted by the applicant or patent owner. There 
is currently no requirement that changes in assignment information be 
updated, though current law protects against certain types of fraud if 
such updating occurs. See 35 U.S.C. 261. Consequently, the information 
the Office has on file may be outdated, which may be misleading to the 
public. Ensuring that the Office can provide information to the public 
that is not misleading is consistent with several statutory provisions 
directing the Office to disseminate information to the public as well 
as those directing the Office to provide access to information through 
electronic means. See 35 U.S.C. 2(a)(2) (creating a duty of 
``disseminating to the public

[[Page 4115]]

information with respect to patents''); 10(a)(4) (providing for 
publication of information, including ``annual indexes of . . . 
patentees''); 10(b) (allowing the Director to publish the specified 
information set forth in item (4) of subsection 35 U.S.C. 10(a) of this 
section in a publication format ``desirable for the use of the 
Office'') and 41(i) (creating a duty to provide access to information 
electronically).
3. Description and Estimate of the Number of Affected Small Entities
    A. Size Standard and Description of Entities Affected. The Small 
Business Administration (SBA) small business size standards applicable 
to most analyses conducted to comply with the Regulatory Flexibility 
Act are set forth in 13 CFR 121.201. These regulations generally define 
small businesses as those with fewer than a specified maximum number of 
employees or less than a specified level of annual receipts for the 
entity's industrial sector or North American Industry Classification 
System (NAICS) code. As provided by the Regulatory Flexibility Act, and 
after consultation with the Small Business Administration, the Office 
formally adopted an alternate size standard as the size standard for 
the purpose of conducting an analysis or making a certification under 
the Regulatory Flexibility Act for patent-related regulations. See 
Business Size Standard for Purposes of United States Patent and 
Trademark Office Regulatory Flexibility Analysis for Patent-Related 
Regulations, 71 FR 67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 
(Dec. 12, 2006). This alternate small business size standard is SBA's 
previously established size standard that identifies the criteria 
entities must meet to be entitled to pay reduced patent fees. See 13 
CFR 121.802. If patent applicants identify themselves on a patent 
application as qualifying for reduced patent fees, the Office captures 
this data in the Patent Application Location and Monitoring (PALM) 
database system, which tracks information on each patent application 
submitted to the Office.
    Unlike the SBA small business size standards set forth in 13 CFR 
121.201, the size standard for the Office is not industry-specific. 
Specifically, the Office's definition of small business concern for 
Regulatory Flexibility Act purposes is a business or other concern 
that: (1) Meets the SBA's definition of a ``business concern or 
concern'' set forth in 13 CFR 121.105; and (2) meets the size standards 
set forth in 13 CFR 121.802 for the purpose of paying reduced patent 
fees, namely, an entity: (a) Whose number of employees, including 
affiliates, does not exceed 500 persons; and (b) which has not 
assigned, granted, conveyed, or licensed (and is under no obligation to 
do so) any rights in the invention to any person who made it and could 
not be classified as an independent inventor, or to any concern which 
would not qualify as a non-profit organization or a small business 
concern under this definition. See Business Size Standard for Purposes 
of United States Patent and Trademark Office Regulatory Flexibility 
Analysis for Patent-Related Regulations, 71 FR at 67112, 1313 Off. Gaz. 
Pat. Office at 63.
    B. Estimate of Number of Entities Affected. The proposed rules will 
apply to all entities, including small or micro entity patent 
applicants or patent owners, that: (1) File a patent application; (2) 
change attributable owners during the pendency of a patent application; 
(3) pay an issue fee in an allowed application; (4) pay a maintenance 
fee for a patent; (5) file a request for supplemental examination under 
35 U.S.C. 257(a); (6) file a request for ex parte reexamination under 
35 U.S.C. 302; or (7) have a patent involved in a third-party requested 
ex parte reexamination under 35 U.S.C. 302, or a trial proceeding 
before the PTAB, such as any post grant review under 35 U.S.C. 321, 
inter partes review under 35 U.S.C. 311, covered business method patent 
review under section 18 of the AIA, or derivation proceeding under 35 
U.S.C 135.
    Based upon the information in the Office's PALM system, the Office 
received approximately 437,000 new applications (including continuing 
applications but not requests for continued examination) in fiscal year 
2013, of which approximately 131,000 were by small or micro entity 
applicants. Thus, the Office estimates that 437,000 patent applicants, 
of which 131,000 are small or micro entities, will need to provide 
attributable owner information each year due to the requirement to 
identify the attributable owner at the time a patent application is 
initially filed (or shortly thereafter).
    Based upon the information in the Office's PALM system, there are 
approximately 1,249,000 patent applications currently (in October of 
2013) pending before the Office, of which 337,000 are by small or micro 
entity applicants. Since the Office does not currently require 
applicants and patent holders to disclose changes in the attributable 
owner of an application or patent, the Office does not have information 
on how often there is a change in attributable owner of an application 
during the pendency of a patent application. The Office's assignment 
records, however, indicate that about ninety-two percent of 
applications have recorded assignment documents at the time of patent 
grant, but fewer than four percent of applications have a second 
recorded assignment document each year reflecting some type of 
ownership transfer during the pendency of a patent application. The 
high percentage of patent applicants who currently submit an assignment 
document for recordation and the relatively low percentage of patent 
applicants who submit a second assignment document for recordation 
leads to the inference that changes in ownership during the pendency of 
a patent application are relatively infrequent (e.g., changes in 
ownership will occur in fewer than four percent of applications each 
year). Thus, the Office estimates that 50,000 (four percent of 
1,249,000, rounded up to the nearest thousand) patent applicants, of 
which 14,000 (four percent of 337,000, rounded up to the nearest 
thousand) are small or micro entities, will need to update attributable 
owner information each year due to the requirement to update 
attributable owner information when there is a change in ownership 
during the pendency of a patent application.
    Based upon the information in the Office's Revenue Accounting 
Management (RAM) system, the Office received the following fee payments 
in fiscal year 2013: (1) 296,481 issue fee payments (68,574 by small or 
micro entity applicants); (2) 153,875 first stage maintenance fee 
payments (27,076 by small or micro entity patent owners); (3) 99,249 
second stage maintenance fee payments (16,692 by small or micro entity 
patent owners); and (4) 75,470 third stage maintenance fee payments 
(11,273 by small or micro entity patent owners). Thus, the Office 
estimates that 297,000 (266,481 rounded up to the nearest thousand) 
patent applicants, of which 69,000 (68,574 rounded up to the nearest 
thousand) are small or micro entities, will need to update attributable 
owner information each year due to the requirement to identify the 
attributable owner (or verify that the current attributable owner has 
been previously identified) at the time of issue fee payment, and the 
Office estimates that 329,000 (153,875 plus 99,249 plus 75,470, rounded 
up to the nearest thousand), of which 55,000 (27,076 plus 16,692 plus 
11,273, rounded up to the nearest thousand) are small or micro 
entities, will need to update attributable owner information each year 
due to the requirement to identify the attributable owner (or verify 
that the attributable

[[Page 4116]]

owner information currently on record at the Office is correct) at the 
time each maintenance fee is paid.
    Based upon the information from the Office's Central Reexamination 
Unit, there are fewer than 800 requests for ex parte reexamination 
filed each year. In addition, the Office's assignment records show that 
fewer than three percent of the patents in force have a recorded 
assignment document reflecting some type of ownership transfer during 
the life of the patent, which leads to the inference that changes in 
ownership during the life of a patent are relatively infrequent (e.g., 
changes in ownership will occur in fewer than three percent of 
patents). Thus, the Office estimates that approximately 1,000 (800 plus 
three percent of 800 (800 plus 24) rounded up to the nearest thousand) 
patent owners will need to update attributable owner information each 
year due to the requirement to identify the attributable owner (or 
verify that the real party in interest information currently on record 
at the Office is correct) in an ex parte reexamination proceeding or 
when there is a change in ownership during an ex parte reexamination 
proceeding.
    The supplemental examination provisions have been enacted as part 
of the AIA. The Office has received thirty-one requests for 
supplemental examination since September 16, 2012, the effective date 
of the supplemental examination provisions of the AIA. Thus, the Office 
estimates that approximately 100 (31 rounded up to the nearest hundred) 
patent owners will need to update attributable owner information each 
year due to the requirement to identify the attributable owner (or 
verify that the real party in interest information currently on record 
at the Office is correct) at the time the patent owner files a request 
for supplemental examination.
    The PTAB trial provisions (post grant review under 35 U.S.C. 321, 
inter partes review under 35 U.S.C. 311, covered business method patent 
review under section 18 of the AIA, or derivation proceedings under 35 
U.S.C 135) have been enacted as part of the AIA. The Office received 
563 petitions for a PTAB trial proceeding during fiscal year 2013, but 
received between eighty and one hundred petitions for a PTAB trial 
proceeding during each of August, September, and October of 2013. Thus, 
the Office estimates that approximately 2,000 (100 per month multiplied 
by 12 months (1,200) plus three percent of 1200 (1,200 plus 360), 
rounded up to the nearest thousand) patent owners will need to update 
attributable owner information each year based upon the filing of a 
petition for a PTAB trial proceeding.
    Summary of Number of Entities Affected: Based upon the foregoing, 
the Office estimates that: (1) 437,000 (131,000 small or micro entity) 
patent applicants will need to provide attributable owner information 
each year due to the requirement to identify the attributable owner at 
the time a patent application is initially filed (or shortly 
thereafter); (2) 50,000 (14,000 small or micro entity) patent 
applicants will need to update attributable owner information each year 
due to the requirement to update attributable owner information when 
there is a change in ownership during the pendency of a patent 
application; (3) 297,000 (69,000 small or micro entity) patent 
applicants will need to update attributable owner information each year 
due to the requirement to identify the attributable owner (or verify 
that the current attributable owner information on record at the Office 
is correct) at the time of issue fee payment; (4) 329,000 (55,000 small 
or micro entity) patent owners will need to update attributable owner 
information each year due to the requirement to identify the 
attributable owner (or verify that the attributable owner information 
currently on record at the Office is correct) at the time each 
maintenance fee is paid; (5) 1,000 patent owners will need to update 
attributable owner information each year due to the requirement to 
identify the attributable owner (or verify that the real party in 
interest information currently on record at the Office is correct) in 
an ex parte reexamination proceeding, or the requirement to identify 
the attributable owner when there is a change in ownership during an ex 
parte reexamination proceeding; (6) 100 patent owners will need to 
update attributable owner information each year due to the requirement 
to identify the attributable owner (or verify that the attributable 
owner information currently on record at the Office is correct) at the 
time the patent owner files a request for supplemental examination; and 
(7) 2,000 patent owners will need to update attributable owner 
information each year due to the requirement to identify the 
attributable owner (or verify that the attributable owner information 
currently on record at the Office is correct) at the time the patent 
becomes involved a PTAB post grant review, inter partes review, covered 
business method patent review, derivation proceeding, or the 
requirement to identify the attributable owner when there is a change 
in ownership during a PTAB post grant review, inter partes review, 
covered business method patent review, or derivation proceeding.
    4. Description of the projected reporting, recordkeeping and other 
compliance requirements of the proposed rules, including an estimate of 
the classes of small entities which will be subject to the requirement 
and the type of professional skills necessary for preparation of the 
report or record: The proposed rules will apply to all entities, 
including any small or micro entity patent applicant or patent holder, 
that: (1) File a patent application; (2) change attributable owners 
during the pendency of a patent application; (3) pay an issue fee in an 
allowed application; (4) pay a maintenance fee for a patent; (5) file a 
request for supplemental examination under 35 U.S.C. 257(a); (6) file a 
request for ex parte reexamination under 35 U.S.C. 302; or (7) have a 
patent involved in a third-party requested ex parte reexamination under 
35 U.S.C. 302, or a trial proceeding before the PTAB, such as any post 
grant review under 35 U.S.C. 321, inter partes review under 35 U.S.C. 
311, covered business method patent review under section 18 of the AIA, 
or derivation proceeding under 35 U.S.C 135.
    A patent attorney or general practice attorney would have the type 
of professional skills necessary for providing the attributable owner 
information required by the proposed rules. As discussed previously, 
the Office issued a request for comments in November of 2011 (Request 
for Comments on Eliciting More Complete Patent Assignment Information, 
76 FR at 72372 et seq.) and issued a notice of a roundtable and request 
for comments in November of 2012 (Notice of Roundtable on Proposed 
Requirements for Recordation of Real Party-in-Interest Information 
Throughout Application Pendency and Patent Term, 77 FR at 70385 et 
seq.). The Office received input at this roundtable, including the 
suggestion that providing the attributable owner information might have 
a transaction cost of $100, depending upon the inclusiveness of the 
definition of attributable owner (which was discussed under the rubric 
of ``real party in interest'' at the roundtable). It was also suggested 
that the transaction could be less costly, and less frequently 
incurred, because reporting would occur at times applicants were 
already working with the application and would require ownership 
information that was readily known and could be easily reported. As 
described further below, given the Office's records concerning 
assignment recordation and feedback at the roundtable, the Office 
estimates that

[[Page 4117]]

in many instances, reporting ownership information in compliance with 
this proposed rule will have negligible costs. Applicants or patentees 
will often be reporting information readily known (e.g., that the 
patent is owned by the inventor, or that the patent is owned by the 
employer of the inventor to whom it has been assigned) and in many 
instances will be providing this information at a time they are 
otherwise interacting with the Office (e.g., upon application, upon 
issue, during a post-grant proceeding). This seems likely to have a 
minimal cost, and to require minimal time to report. Given the Office's 
records suggesting that many applications do not have more than one 
recorded assignment, in many instances applicants or patentees will 
likely be merely confirming the ownership information is unchanged, 
which should have a negligible cost.
    As noted previously, the Office's assignment records indicate that 
approximately ninety-two percent of patent applications have a recorded 
assignment at the time of grant, and four percent of patent 
applications have a second recorded assignment each year reflecting 
some kind of ownership change. Approximately eight percent of 
applications have no assignment transaction, and presumably are filed 
by the original owners. This suggests that for most applications, there 
would be a single reporting of attributable owner, with no changes 
needed to be reported at later times. At subsequent instances when 
reporting was required (e.g., upon issue), the owner would merely be 
confirming that no change had occurred, which would have negligible 
cost. The Office presumes that reporting costs for these applications 
would be negligible, because the applicants would be indicating that 
they are the attributable owners, providing the same information they 
are providing elsewhere in the application. In summary, the Office 
estimates that in many instances, when reporting is required under the 
proposed rule, applicants or patentees will be providing information 
that is readily known and available to them, and that can be provided 
easily and at negligible cost during the application process, at grant, 
or after grant. The Office estimates that in instances where the owner 
of a large number of patents reports information in compliance with 
this proposal, economies of scale would likely work to reduce the cost 
of reporting (e.g., reporting ownership information at the same time). 
The Office estimates that only a minority of instances would present 
multiple transfers that would potentially require greater costs to meet 
these reporting requirements. In a majority of instances, the Office 
estimates that the costs to report would be minimal.
    The Office welcomes comments from the public specifically on the 
issue of estimating costs of compliance with the proposed rule, 
including comments on possible transaction costs, frequencies of 
reporting changes in information, and possible economies of scale in 
reporting.
    5. Description of any significant alternatives to the rules which 
accomplish the stated objectives of applicable statutes and which 
minimize any significant economic impact of the rules on small 
entities: This analysis considered significant alternatives such as: 
(1) The establishment of differing compliance or reporting requirements 
or timetables that take into account the resources available to small 
entities; (2) the clarification, consolidation, or simplification of 
compliance and reporting requirements under the rule for such small 
entities; (3) the use of performance rather than design standards; and 
(4) an exemption from coverage of the rule, or any part thereof, for 
such small entities. See 5 U.S.C. 603.
    With respect to the proposed requirement for updating any changes 
in attributable owners during the application process, the Office 
considered requiring updated attributable owner information with each 
reply to an Office action. The Office has instead proposed requiring 
updating only if there is a change to the attributable owner during the 
pendency of an application, with a single confirmation at the time of 
issuance, to reduce the need for a periodic review of attributable 
owner information.
    With respect to the proposed requirement for updating any changes 
in attributable owners after the patent is granted, the Office 
considered requiring updating attributable owner information whenever 
there was a post patent proceeding (e.g., with requests for a 
certificate of correction under 35 U.S.C. 254 or 255, or requests to 
correct inventorship under 35 U.S.C. 256).
    With respect to differing compliance or reporting requirements or 
timetables that take into account the resources available to small 
entities, the Office considered requiring updating attributable owner 
information at fewer instances during the pendency of an application 
(e.g., only on filing and at allowance), but such a proposal would not 
achieve the objection of having accurate and up-to-date ownership 
information and providing greater public transparency concerning the 
ownership of pending patent applications and patents. The proposed 
rules minimize the ``periodic'' reporting requirement by permitting an 
applicant or patent owner who updates attributable owner information 
whenever there is a change in the attributable owner to simply confirm 
that there has been no change to the attributable owner.
    With respect to the clarification, consolidation, or simplification 
of compliance and reporting requirements under the rule for such small 
entities, the proposed rules track existing regulations overseen by the 
Federal Trade Commission (e.g., the definition of ultimate parent 
entity in 16 CFR 801.1(a)(3), and the definition of entity in 16 CFR 
801.1(a)(2)) rather than creating new definitions, to minimize the need 
for additional investigation and analysis of ownership structures. The 
simplicity or complexity of the proposed definition of attributable 
owner with respect to any particular application or patent is driven by 
the simplicity or complexity of the ownership arrangement of the 
particular application or patent, which is ultimately within the 
control of the applicant or patent owner. Finally, as discussed 
previously, the proposed rules minimize the reporting requirement by 
permitting an applicant or patent owner who is facing a requirement to 
identify attributable owner information to simply confirm that there 
has been no change to the attributable owner.
    With respect to an exemption from coverage of the rule, or any part 
thereof, for such small entities, such an exemption would defeat the 
objective of having accurate and up-to-date ownership information and 
providing greater public transparency concerning the ownership of 
pending patent applications and patents.
    Finally, the proposed rules do not involve design standards.
    6. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap or conflict with the 
proposed rules: The Office is the sole agency of the United States 
Government responsible for administering the provisions of title 35, 
United States Code, pertaining to examination and granting patents. 
Therefore, no other Federal, state, or local entity shares jurisdiction 
over the examination and granting of patents.
    Other countries, however, have their own patent laws, and an entity 
desiring a patent in a particular country must make an application for 
patent in that country, in accordance with the applicable law. Although 
the potential for overlap exists internationally, this cannot be 
avoided except by treaty

[[Page 4118]]

(such as the Paris Convention for the Protection of Industrial 
Property, the Patent Law Treaty (PLT), or the Patent Cooperation Treaty 
(PCT)). Nevertheless, the Office believes that there are no other 
duplicative or overlapping rules.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
Government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801-808), the United States Patent and Trademark Office 
will submit a report containing any final rule resulting from this 
rulemaking and other required information to the U.S. Senate, the U.S. 
House of Representatives, and the Comptroller General of the Government 
Accountability Office.
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this document do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
    This rulemaking proposes to require that patent applicants identify 
the attributable owner or owners on filing of an application (or 
shortly thereafter), within three months of any change in attributable 
owner during the pendency of the application, and when the issue fee is 
due for an application that has been allowed. This rulemaking also 
proposes to require that patent holders identify the attributable owner 
when a maintenance fee is due, and when a patent becomes involved in 
certain post-issuance proceedings at the Office, including in 
supplemental examination, ex parte reexamination, or a trial proceeding 
before the PTAB. This rulemaking further proposes to provide that an 
applicant or patent owner may correct a good faith failure to notify 
the Office of a change to the attributable owner, or correct an 
indication of an incorrect or an incomplete attributable owner, by 
filing a petition accompanied by a showing of reason for the delay, 
error, or incompleteness.
    The collection of information that would be triggered by these 
proposed requirements has been submitted to OMB under OMB control 
number 0651-00xx. The proposed collection, containing the basis for the 
following summary of the estimated annual reporting burdens, will be 
available at OMB's Information Collection Review Web site: 
www.reginfo.gov/public/do/PRAMain. The title, description and 
respondent description of this information collection, with an estimate 
of the annual reporting burdens, follows:
    Title of Collection: Identification of Attributable Owner.
    OMB Control Number: 0651-00xx.
    Needs and Uses: This information collection is necessary in order 
to provide the Office and the public with up-to-date information 
concerning the attributable owner of a patent or patent application. 
The Office will use the information collected to facilitate patent 
examination and other parts of the Office's internal processes by 
helping to: (1) Ensure that a ``power of attorney'' is current in each 
application or proceeding before the Office; (2) avoid potential 
conflicts of interest for Office personnel; (3) 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

[[Page 4119]]

patenting; (4) verify that the party making a request for a post-
issuance proceeding is a proper party for the proceeding; and (5) 
ensure that the information the Office provides to the public 
concerning published applications and issued patents is accurate and 
not misleading.
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Respondents: 1,116,300 responses per year.
    Estimated Time per Response: The Office estimates that it will take 
the public, on average, approximately 6 minutes (0.1 hour) to identify 
the attributable owner in an application or patent and approximately 1 
hour to correct a good faith failure to notify the Office of a change 
to the attributable owner (or to correct a good faith but incorrect or 
incomplete indication of attributable owner).
    Estimated Total Annual Respondent Burden Hours: 111,810 hours per 
year (1,116,100 responses times 0.1 hours plus 200 responses times 1 
hour).
    Estimated Total Annual (Hour) Respondent Cost Burden: $43,494,090 
per year (111,810 hours times the $389/hour attorney rate suggested by 
the AIPLA 2013 Economic Survey).
    The Office is soliciting comments to: (1) Evaluate whether the 
proposed information requirement is necessary for the proper 
performance of the functions of the Office, including whether the 
information will have practical utility; (2) evaluate the accuracy of 
the Office's estimate of the burden; (3) enhance the quality, utility, 
and clarity of the information to be collected; and (4) minimize the 
burden of collecting the information on those who are to respond, 
including by using appropriate automated, electronic, mechanical, or 
other technological collection techniques or other forms of information 
technology.
    Please send comments related to this proposed collection of 
information under the Paperwork Reduction Act on or before March 25, 
2014 to Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA, 22313-1450, marked to the attention of Raul 
Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patent Examination Policy. 
Comments should also be submitted to the Office of Information and 
Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, Room 10202, 725 17th Street NW., Washington, DC 20503, 
Attention: Desk Officer for the United States Patent and Trademark 
Office.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act, unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.17 is amended by revising paragraph (g) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (g) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.   1.29)..............................     $50.00
By a small entity (Sec.   1.27(a))...........................    $100.00
By other than a small or micro entity........................    $200.00
 

    Sec.  1.12--for access to an assignment record.
    Sec.  1.14--for access to an application.
    Sec.  1.46--for filing an application on behalf of an inventor by a 
person who otherwise shows sufficient proprietary interest in the 
matter.
    Sec.  1.55(f)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.59--for expungement of information.
    Sec.  1.103(a)--to suspend action in an application.
    Sec.  1.136(b)--for review of a request for extension of time when 
the provisions of Sec.  1.136(a) are not available.
    Sec.  1.279--for correction of attributable owner in a pending 
application.
    Sec.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.387--for correction of attributable owner in a patent.
    Sec.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  5.25--for retroactive license.
* * * * *
0
3. New undesignated center headings and new Sec. Sec.  1.271, 1.273, 
1.275, 1.277, and 1.279 are added immediately after Sec.  1.251 to read 
as follows:

Attributable Owner


Sec.  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.
    (d) The term ``entity'' used in this section includes:
    (1) Any natural person, corporation, company, partnership, joint 
venture, association, joint-stock company, trust, estate of a deceased 
natural person, foundation, fund, or institution, whether incorporated 
or not, wherever located and of whatever citizenship;
    (2) Any receiver, trustee in bankruptcy or similar official or any 
liquidating agent for any of the entities described in paragraph (d)(1) 
of this section, in his or her capacity as such;
    (3) Any joint venture or other corporation which has not been 
formed but the acquisition of the voting securities or other interest 
in which, if already formed, would be an attributable owner as 
described in this section; or
    (4) Any other organization or corporate form not specifically 
listed in

[[Page 4120]]

paragraphs (d)(1), (d)(2), or (d)(3) of this section that holds an 
interest in an application or patent.
    (e) Notwithstanding the provisions of paragraph (d) of this 
section, the term ``entity'' does not include any foreign state, 
foreign government, or agency thereof (other than a corporation or 
unincorporated entity engaged in commerce), and also does not include 
the United States, any of the States thereof, or any political 
subdivision or agency of either (other than a corporation or 
unincorporated entity engaged in commerce).
    (f) When there is a requirement to identify the attributable owner, 
each entity constituting the attributable owner must be identified as 
follows:
    (1) The identification of a public company must include the name of 
the company, stock symbol, and stock exchange where the company is 
listed;
    (2) The identification of a non-public company must include the 
name of the company, place of incorporation, and address of the 
principal place of business;
    (3) The identification of a partnership must include the name of 
the partnership and address of the principal place of business;
    (4) The identification of a natural person must include the full 
legal name, residence, and a correspondence address; and
    (5) The identification of any other type of entity must include its 
name, if organized under the laws of a state, the name of that state 
and legal form of organization, and address of the principal place of 
business.
    (g) Except for shareholders of a public company, the presence of a 
corporate form, partnership, or other association, does not preclude an 
entity who may also be a shareholder or partner in such an identified 
attributable owner from a requirement to be separately identified as an 
attributable owner if the entity is also described in paragraph (a), 
(b) or (c) of this section as an entity qualifying as an attributable 
owner.

Identification of Attributable Owner in Pending Applications


Sec.  1.273  Initial identification of attributable owner in an 
application.

    The attributable owner as defined in Sec.  1.271 must be identified 
in each application under 35 U.S.C. 111(a), including a reissue 
application, and in each international application that commenced the 
national stage under 35 U.S.C. 371(b) or (f). If an application under 
35 U.S.C. 111(a) which has been accorded a filing date pursuant to 
Sec. Sec.  1.53(b) or (d) does not identify the attributable owner as 
defined in Sec.  1.271, or if an international application which 
complies with Sec.  1.495(b) does not identify the attributable owner 
as defined in Sec.  1.271, the applicant will be notified and given a 
period of time within which to file a notice identifying the 
attributable owner as defined in Sec.  1.271 to avoid abandonment. The 
notice by the Office under this section may be combined with a notice 
under Sec.  1.53(f) or Sec.  1.495(c).


Sec.  1.275  Maintaining current attributable owner during prosecution 
of an application.

    If there is a change to the attributable owner as defined in Sec.  
1.271 during the pendency of an application under 35 U.S.C. 111(a) or 
the pendency of an international application which complies with Sec.  
1.495(b), the applicant has three months from the date of the change to 
the attributable owner within which to file a notice identifying the 
current attributable owner as defined in Sec.  1.271. This three-month 
period is not extendable.


Sec.  1.277  Identifying current attributable owner at allowance.

    If a notice of allowance under Sec.  1.311 has been sent to the 
applicant, the applicant must file a notice identifying the current 
attributable owner as defined in Sec.  1.271 within three months from 
the date of mailing of the notice of allowance to avoid abandonment of 
the application. This three-month period is not extendable. If there 
has been no change to the attributable owner as defined in Sec.  1.271 
that was most recently provided to the Office, the notice may simply 
indicate that there has been no change to the attributable owner as 
defined in Sec.  1.271 most recently provided to the Office.


Sec.  1.279  Correction of failure to notify the Office of a change to 
the attributable owner and errors in notice of attributable owner in a 
pending application.

    If, despite a good faith effort by the applicant to notify the 
Office of the initial attributable owner as defined in Sec.  1.271, and 
of any changes to the attributable owner as defined in Sec.  1.271, in 
the manner required by Sec. Sec.  1.273, 1.275, and 1.277, the 
applicant has failed to notify the Office of a change to the 
attributable owner or has indicated an incorrect or an incomplete 
attributable owner, the failure or error may be excused in a pending 
application on petition accompanied by a showing of reason for the 
delay, error, or incompleteness, and the petition fee set forth in 
Sec.  1.17(g).
0
4. A new undesignated center heading and new Sec. Sec.  1.381, 1.383, 
1.385, and 1.387 are added immediately after Sec.  1.378 to read as 
follows:

Identification of Attributable Owner in Patents Involved in Proceedings 
Before the Office


Sec.  1.381  Identifying current attributable owner with maintenance 
fee payment.

    A notice identifying the current attributable owner as defined in 
Sec.  1.271 must be filed within the period specified in Sec.  1.362(d) 
or (e), but prior to the date the maintenance fee is paid, for each 
maintenance fee payment. If there has been no change to the 
attributable owner as defined in Sec.  1.271 most recently provided to 
the Office, the notice may simply indicate that there has been no 
change to the attributable owner as defined in Sec.  1.271 that was 
most recently provided to the Office.


Sec.  1.383  Identifying attributable owner in patents involved in 
Patent Trial and Appeal Board Trial Proceedings.

    The mandatory notice filed by a patent owner as required by Sec.  
42.8(a)(2) of this chapter must also be accompanied by a notice 
identifying the current attributable owner as defined in Sec.  1.271. 
If there is a change to the attributable owner as defined in Sec.  
1.271 during the pendency of the trial proceeding, the patent owner has 
twenty-one days from the date of the change to the attributable owner 
within which to file a notice identifying the current attributable 
owner as defined in Sec.  1.271. This twenty-one-day period is not 
extendable.


Sec.  1.385  Identifying attributable owner in patents involved in 
supplemental examination and reexamination proceedings.

    (a) A request for supplemental examination under Sec.  1.610 must 
also be accompanied by a notice identifying the current attributable 
owner as defined in Sec.  1.271.
    (b) A request for ex parte reexamination under Sec.  1.510 by the 
patent owner must also be accompanied by a notice identifying the 
current attributable owner as defined in Sec.  1.271.
    (c) A reply or any other paper filed by the patent owner in an ex 
parte reexamination proceeding must be accompanied by a notice 
identifying the current attributable owner as defined in Sec.  1.271, 
unless such a notice has previously been filed by the patent owner. If 
there is a change to the attributable owner as defined in Sec.  1.271 
during the pendency of the reexamination proceeding, the patent owner 
has three months from the date of the change to the attributable owner 
within which to file a notice identifying

[[Page 4121]]

the current attributable owner as defined in Sec.  1.271. This three-
month period is not extendable.


Sec.  1.387  Correction of failure to notify the Office of a change to 
the attributable owner and errors in notice of attributable owner in a 
patent.

    If, despite a good faith effort by the patent owner to notify the 
Office of the initial attributable owner as defined in Sec.  1.271, and 
of any changes to the attributable owner as defined in Sec.  1.271, in 
the manner required by Sec. Sec.  1.273, 1.275, 1.277, 1.381, 1.383, 
and 1.385, the patent owner has failed to notify the Office of a change 
to the attributable owner or has indicated an incorrect or an 
incomplete attributable owner, the failure or error may be excused on 
petition accompanied by a showing of reason for the delay, error, or 
incompleteness, and the petition fee set forth in Sec.  1.17(g).

    Dated: January 16, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-01195 Filed 1-23-14; 8:45 am]
BILLING CODE 3510-16-P