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USPTO Requests Comments for its Proposed Changes to Assignment Practice

  • 01.11.12
  • Sterne, Kessler, Goldstein & Fox

The USPTO has published a request for comments for its proposed changes to assignment practice.  Click here for information.  Comments are due on January 23, 2012. 

Changes Under Consideration

    These potential changes include:

    (1) Amending 37 CFR to require that any assignee or assignees be 
disclosed at the time of application filing;

    (2) Amending 37 CFR 3.81 to require that the application issue in 
the name of the assignee or assignees as of the date of payment of the 
issue fee;

    (3) Amending 37 CFR 1.215(b) to require the identification of 
assignment changes after filing date for inclusion on the patent 
application publication (PGPub);

    (4) Amending 37 CFR 1.27(g) to require timely identification of any 
new ownership rights that cause the application or issued patent to 
gain or lose entitlement to small entity status; and

    (5) Amending 37 CFR to provide for discounted maintenance fees in 
return for verification or update of assignee information either when a 
maintenance fee is paid or within a limited time period from the date 
of maintenance fee payment.

    With regard to change (2) above, 37 CFR 3.81 currently states that 
the ``application may issue in the name of the assignee * * * where a 
request for such issuance is submitted with payment of the issue fee.'' 
The ``request for such issuance'' (in the name of the assignee) is made 
by entering the name and residence of the assignee in box 3 of the 
issue fee transmittal form (form 85B). The assignee name entered in box 
3 of form 85B is printed on the patent and included in USPTO's 
searchable U.S. Patent database. The USPTO is considering amending 37 
CFR 3.81 to no longer predicate issuance in the name of the assignee on 
whether or not the applicant decides to make a ``request for such 

    Rather, the USPTO is considering amending 37 CFR 3.81 to require 
that the assignee be identified at the time of payment of the issue 
fee. Correspondingly, Box 3 of Form 85B may be changed to show that the 
assignee name must be entered. This could help improve the accuracy of 
assignment searches made in the U.S. patent database. As amended by the
AIA, 35 U.S.C. 118 similarly requires that applicants update assignee 
information at the time of allowance:

    [I]f the Director grants a patent on an application filed under 
this section by a person other than the inventor, the patent shall 
be granted to the real party in interest and upon such notice to the 
inventor as the Director considers to be sufficient.

    With regard to change (3), 37 CFR 1.215(b) currently sets forth 
that assignee information must appear on the application transmittal 
sheet (e.g., form PTO/SB/05) or the application data sheet (e.g., form 
PTO/SB/14) if applicant ``wants'' the PGPub to contain assignment 
information. In order to promote more complete assignee data in the 
USPTO's searchable PGPub database, the language of Sec.  1.215(b) could 
be changed to state that applicant ``must'' provide assignee 
information, rather than provide assignee information only if applicant 
``wants'' to do so. Additionally, the office could modify forms PTO/SB/
05 and PTO/SB/14 to better indicate that the assignee information must 
be entered.

    With regard to change (4), the title of 37 CFR 1.27(g)(2) is 
``Notification of loss of entitlement to small entity status is 
required when issue and maintenance fees are due.'' However, current 
Sec.  1.27(g)(2) does not require identification of the new assignee 
that caused the application or issued patent to lose entitlement to 
small entity status, or in the alternative, a statement that the 
current assignee is no longer eligible for small entity status for 
other reasons (e.g., a license to a business that does not qualify as a 
small entity). The USPTO is considering amending Sec.  1.27(g)(2) to 
require such identification or statement.

    With regard to change (5), the USPTO is considering implementing 
its new fee setting authority, under Sec.  10 of the AIA, in order to 
provide for discounted maintenance fees in return for verification or 
update of assignee information either when a maintenance fee is paid or 
within a limited time period from the date of maintenance fee payment.
    The patent assignment recordation statute, 35 U.S.C. 261, provides 

    An assignment, grant, or conveyance shall be void as against any 
subsequent purchaser or mortgagee for a valuable consideration, 
without notice, unless it is recorded in the Patent and Trademark 
Office within three months from its date or prior to the date of 
such subsequent purchase or mortgage.

    Failure to record a patent assignment voids the assignment against 
a subsequent purchaser or mortgagee of the patent. Where there is no 
subsequent purchaser or mortgagee, the statute has no effect other than 
to protect against potential future subsequent purchasers or 
mortgagees. Moreover, even where the statute may have effect, owners 
may still have incentives not to record. Thus, the absence of an 
explicit, affirmative recordation requirement may result in an 
incomplete assignment record.

    If the USPTO pursues this change, the information verifying or 
updating assignee information would likely be required to come from a 
party under 37 CFR 1.33(b). In addition, any new assignment documents 
would likely be required to be recorded in order to claim the discount. 
Providing for discounts within a limited time period after a 
maintenance fee payment would permit a third party fee submitter to pay 
the maintenance fee, followed by the party under 37 CFR 1.33(b) 
requesting the discount in the form of a partial refund.

    Administratively, the USPTO would have to decide whether the 
discount should go to the 37 CFR 1.33(b) party, or to the third party 
fee submitter in this situation. The USPTO is aware that a significant 
portion of maintenance fees are filed by ``bulk filers'' which are 
companies whose business with the USPTO is to pay maintenance fees in 
bulk. Since the bulk filers are customarily paid up front for whatever 
fee amount is to be paid to the USPTO (discounted or undiscounted), 
there should be no loss to bulk filers if discounts were sent directly 
to the 37 CFR 1.33(b) party. For the discount to be obtained, the 
request for the discount would ideally be accompanied by a verification 
of current assignment information, or identification of the new 
assignee together with the corresponding assignment documents for 

II. Request for Comments

    Comments on one or more of the following questions would be helpful 
to the USPTO:

    (1) Is there any reason that the mandatory disclosure of any 
assignee or assignees should not take place at the time of application 

    (2) Would it be in the public interest for the USPTO to obtain from 
applicants updated identification of the assignee at the time of 
allowance, e.g. in response to the Notice of Allowance? Are there 
limitations on the USPTO's rights and powers to require the reporting 
of such information?

    (3) Would it be in the public interest for the USPTO to obtain from 
applicants updated identification of the assignee during prosecution of 
the application? Are there limitations on the USPTO's rights and powers 
to require the reporting of such information? Should the USPTO consider 
requiring the identification of assignment changes after filing date 
for inclusion on the patent application publication (PGPub)? At what 
time should changes be recorded relative to the assignment, and what 
are the appropriate consequences of non-compliance?

    (4) Would it be in the public interest for the USPTO to obtain from 
applicants updated identification of the assignee after issue of the 
patent? Are there limitations on the USPTO's rights and powers to 
require the reporting of such information? At what time should such 
identification be made to the Office relative to a change? Should the 
USPTO consider requiring the identification of assignment changes 
during the maintenance period of the patent right, i.e., after grant, 
but prior to patent expiration? What are the appropriate consequences 
of non-compliance?

    (5) To accomplish adequate and timely recording, are changes to 
Agency regulations necessary? What are the most effective and 
appropriate means for the USPTO to provide the public with a timely and 
accurate record of the assignment of patent rights and the assignee?

    (6) Would it help the USPTO's goal of collecting more updated 
assignment information if 37 CFR 1.27(g)(2) were amended to require 
identification of any new ownership rights that caused the application 
or issued patent to lose entitlement to small entity status?

    (7) Given the passage of the America Invents Act, is it proper for 
the Office to provide for financial incentives for disclosure of 
assignment information by way of discounts in fee payments? For 
example, would it be more likely for patentees to update assignment 
information and record assignment documents on in-force patents if a 
maintenance-fee discount were available in return? What are the 
appropriate consequences for failure to provide accurate information 
when accepting such a discount?

    (8) In order to provide a more complete record for transactional 
purposes, what changes do you recommend that USPTO make in its 
requirements or incentives relating to the disclosure of assignment 
information during the patent application process and for issued in-
force patents?

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