USPTO Proposal to Require Identification of Patent Owners

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USPTO Proposal to Require Identification of Patent Owners. Stephen S. Wentsler AIPPI/JFBA/AIPLA Joint Meeting Tokyo, Japan April 7, 2014. June 4, 2013 White House issued an executive order titled “Making ‘Real Party in Interest’ the New Default” - PowerPoint PPT Presentation

Transcript of USPTO Proposal to Require Identification of Patent Owners

Stephen Wentsler - USPTO Proposal to Require IdentificationUSPTO Proposal to Require
Identification of Patent Owners
Firm Logo
June 4, 2013 White House issued an executive order titled “Making ‘Real Party in Interest’ the New Default”
January 24, 2014 issued Notice of Proposed Rulemaking
Federal Register / Vol. 79, No. 16
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Titleholder
Assignee
The entity that has been exclusively or jointly assigned title to the patent or application.
Sometimes the exclusive licensee if enough rights were transferred to effectively be an assignment
Enforcement Entity
Entity with the rights to enforce the patent
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Ultimate Parent Entity
The entity who:
has ultimate control of the enforcement entity and/or the titleholder; and
is not controlled by any other entity.
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Ultimate Parent Entity
Control means
If incorporated – entity who holds 50% or more of the outstanding voting shares
If not incorporated –
entity having the right to 50% or more of the profits, or
entity having the rights to 50% or more of the assets of the entity upon dissolution
Entity having the contractual power to designate 50% or more of the directors of a corporation
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Hidden Beneficial Owners
An entity who hides its interest by preventing vesting of the interest with the entity
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patent
Hidden Beneficial Owner – P6
Public Company
Non-Public Company
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Partnership
If a natural person
Name of the state if organized under the state laws
Address of the principal place of business
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need to be disclosed
At the time the application is filed (or shortly thereafter)
Does not apply to provisional
Applies to the national stage application (not the international application)
Considering 2-month shortened period of reply
Extendable by 5 months
Within 3 months of any change in the attributable owner during the pendency of the application
Not extendable
At the time of issue fee
Due within 3 months (not extendable) or the application/patent will be abandoned
At the time of payment of the maintenance fee
Due before payment of the maintenance fee
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Disclosure to the USPTO
When the patent is involved in certain post-issuance proceedings at the USPTO
Filing a request for supplemental examination
Filing a request for ex parte reexamination
Filing a reply by the patent owner in an ex parte reexamination
If a change happens during the reexamination proceeding, the patent owner has 3 months from the change to the attributable owner to notify (not extendable)
Trial proceeding before the Patent Trial and Appeal Board (PTAB)
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Applications required to comply with the Rule
Identify at time of filing or when there is a change in an attributable owner
Required for all applications filed on or after the effective date of the final Rule
Identify at the time of payment of the issue fee
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Identify at time of payment of the maintenance fee
Required if the payment occurs on or after the effective date of the final Rule
Identify when petition/request is filed
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Willingness to license
Commitments to license the patent
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information at the USPTO
The public on any published application or issued patent
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Written Comments on the Proposed Rulemaking Due April 24, 2014
By Email
Mail Stop Comments-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Stephen S. Wentsler
Cleveland, Ohio 44114