March 27, 2014
The USPTO has proposed a new rule requiring that the attributable owner of a patent application or patent be identified during the pendency of a patent application and at specified times during the life of a patent. Failure to identify the attributable owner as required under the proposed rule will result in abandonment of the patent. The period for comment on the proposed rules ends on April 24, 2014.
When must the attributable owner be identified?
- Application: The attributable owner must be identified in the application or within the post-filing grace periods totaling up to eight months.
- During prosecution: The applicant has a non-extendable period of three months from the date of the change to the attributable owner within which to file a notice identifying the current attributable owner.
- Notice of Allowance: The attributable owner, if different than in the application, must be identified within a non-extendible three-month period after the notice.
Who is the “attributable owner”?
Under the proposed rules, the attributable owner is:
- An entity that, exclusively or jointly, has been assigned title to the patent or application.
- 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; joinder rules require, for example:
- Co-inventors – even if one inventor made a contribution to only one claim in the patent;
- Assignees, including the commonly-found original assignment by inventors to their employing companies;
- Exclusive licensees, in cases in which substantially all rights have been transferred such that the assignment actually constitutes a license. Generally, that transfer includes a license of the entire bundle of rights granted under a patent. Especially problematic for joinder purposes are retained rights by the patentee of (1) the right of exclusivity, (2) the right to transfer, and (3) the right to sue infringers. In such cases, joinder of the assignor will be required and must be named as “attributable owner”.
- The ultimate parent entity of the listed owner, if applicable. The ultimate parent entity is an entity which is not controlled by any other entity (or natural person). The proposed rules provide additional guidance on the definition of “ultimate parent”.1
What is the penalty for failure to identify attributable owner?
If the attributable owner is not properly identified within the proposed rules, the patent application/patent will be abandoned. The new proposed rule provides some limited revival mechanisms, only in cases of unintentional failure of proper attribution, and within specified time periods.
The United States Patent and Trademark Office has a dedicated web resource consolidating attributable ownership rules, resources, and comments.
1 The proposed rules define “ultimate parent entity”, as “an entity which is not controlled by any other entity,” The Federal Regulations (16 CFR 801.1(b)) define “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.