AIA Creates Dilemna for USPTO on Patent Ownership

This past Monday, the USPTO issued a Notice in the Federal Register entitled Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term (here).

In a nutshell, the agency is currently struggling to promulgate regulations to unravel the complex business relationships behind many patent assignments (i.e., real-party-in-interest). For example, some large patent aggregators may create subsidiaries or exclusive licensee arrangements that are not captured in current assignment records of the USPTO. Yet, the new prior art defintions of the AIA demand transparency in this regard. Generally, the USPTO lays out some policy arguments for increased real-party-in-interest information (RPI). First, the Notice explains that as patents are increasingly valued as intangible assets that industry/financial markets should have the most up to date information on ownership to navigate the competitive landscape, produce competitive products, facilitate investment etc. Second, the Notice explains that more complete information is required to ensure that Power of Attorney filings are confirmed as up-to-date, and USPTO officials may recuse themselves as necessary.

Yet, perhaps the most compelling rationale for the proposed Roundtable discussion and rule making effort is the AIA change to the definition of prior art. For example, 35 U.S.C. § 102(b)(2)(c) 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” (emphasis added)

The Notice explains that:

[U]nder new section 102(b)(2)(C), 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 section 102(b). As a result, tracking ownership information for patent applications and issued patents is directly relevant to questions of novelty during prosecution and to mechanisms for challenging patents post-issuance.

During the Roundtable, the USPTO will discuss separate proposals for defining the necessary RPI to be submitted by owners:

1. Those parties having the legal right to enforce the patent (all necessary parties).

2. “Ultimate Parent Entity” (defined as an entity not controlled by another) not as broad as option 1.

The USPTO is proposing the collection of this information upon filing of an application, prior to publication, prior to issuance, and at the time of each maintenance fee payment. These new controls are designed to apply to applications filed on or after March 16, 2013.

The Roundtable is schedule for January 25, 2013.  Requests for participation must be submitted to the USPTO by December 21, 2012.