Whither the USPTOs Authority to Require Ownership Recordation

By Dennis Crouch

The USPTO has proposed a new set of proposed rules that would require recordation of patent ownership rights, including the ultimate parent entity of any patent owner. Some question whether the USPTO actually have the authority to make these rules. The basics of federal agency authority begins at zero. That is, an agency has no authority to act until given authority by Congress. Because the longstanding nature of Patent Office activities, some of these authorities may flow from explicit statutory authority while others may flow from very longstanding practice.

The USPTO has long-maintained a registry of patent ownership, although the Patent Act only implicitly suggests as much. 35 U.S.C. § 261 provides that an assignment of patent rights (or other 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.” Section 161 suggests that the USPTO must have authority to create and organize its system of recordation. However, there are no statutory provisions that particularly provide that authority.

The patent ownership records reach back well into the 19th century and are discussed by a handful of decisions by Justice Story. See, e.g., Pitts v. Whitman, 2 Story 609 (C.C.D. Maine 1843). Justice Story’s decisions focus on the effect of recordation-of-rights and also the failure to record. Justice Story reached the general conclusion that a patentee is under no legal duty record patent ownership and that a patent owner could enforce the patent even without ever recording his interest. According to Story, the one purpose of the recordation is to put potential subsequent bona fide purchasers on notice. In its proposed rulemaking, the USPTO rejects Justice Story’s principles and instead defends a broader purpose of recordation that also militates for a broader requirement of recordation. Justice Story’s perception of the law has continued to be considered the black-letter law. See, In re Cybernetic Services, Inc., 252 F.3d 1039 (9th Cir. 2001) (“Congress intended for parties to record their ownership interests in a patent so as to provide constructive notice only to subsequent holders of an ownership interest.”); John Tuman & Sons v. Basse, 113 F.2d 928 (2nd Circuit 1940) (“The only possible interest of … an infringer which deserves protection is the avoidance of the danger of being sued more than once for the same unlawful act.”). Now, the Tuman & Sons case does have some interesting statement regarding the pre-1952 patent act that only allowed a patent to an assignee “but the assignment must first be entered of record in the Patent Office.” (Quoting Section 4895 of the Old Act). The ’52 Act dropped the seeming requirement of assignee recordation and instead more simply states that patents be granted “to the assignee of the inventor of record.” 35 U.S.C. § 152. The 2011 America Invents Act (AIA) adds a bit of meat to PTO authority because of the restructuring that focuses on the “applicant” rather than on the “inventor.” See 35 U.S.C. § 118. Under the newly revised law, the PTO appears to be charged with determining whether the applicant qualifies to manage the applicant. I.e., the PTO must determine whether the applicant “shows sufficient proprietary interest.” Id.

In considering USPTO authority for its expansion of the recordation requirement, it makes sense to focus on 35 U.S.C. § 2. That provision provides for a set of general powers – giving the Office the power to establish regulations to “govern the conduct of proceedings in the Office.” §2(b)(2)(A). In its notice of proposed rulemaking, the USPTO identifies that general regulatory power as the source of its authority to regulate here. The USPTO’s position has substantial basis in law – especially when considered within the context of the fairly recent Federal Circuit decisions in Star Fruits S.N.C. v. U.S., 393 F.3d 1277 (Fed. Cir. 2005) and Cooper Techs. Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008). In those cases, the courts found that the USPTO has authority to promulgate “procedural” rules that require “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.” And, implicit in a submission requirement is that some form of punishment (such as abandonment) stems from failure to comply.

The proposed rulemaking was careful drafted by the USPTO to justify its demand for additional evidence in both (1) benefits to third parties (its implicitly primary reason) and (2) benefits for the examination process (its implicitly secondary reason). Although arguably a secondary motivation, the alleged benefits of recordation to the examination process are well within the core mission of the USPTO and thus provide better legal foundation for the rules under § 2(b).

The backstop here is Tafas v. Dudas, 559 F.3d 1345 (Fed. Cir. 2009) (vacated). That discussion will await a future post.

186 thoughts on “Whither the USPTOs Authority to Require Ownership Recordation

  1. link to dailykos.com

    “So this is far more than the NSA. Far more than their metadata, which only collects phone numbers but not names, far more because they have no re-authorization, far more because there is no appropriation restrictions placed on it. This is more than just NSA-style, this is more Gestapo-style collection of data on individual citizens who have no clue that this is happening.

    Sound familiar? This is a Florida Republican going batshxt crazy over a National Mortgage Database that “will primarily be used to support the agencies’ policymaking and research efforts and to help regulators better understand emerging mortgage and housing market trends.” Note that the “database will not contain personally identifiable information and appropriate precautions will be taken by the agencies to ensure that individual consumers cannot be identified through the database or through any datasets that may be made available to researchers or the public”.

    Yes, that’s how we keep tabs on the activities of private banks so we can prevent or mitigate disasters that those banks effected on the public in the past and surely will again if we allow them to have their way about everything. Note: private banks.

    If you think the public has no right to know some specifics about who is being served up or who is swallowing up powerful entitlements by a public agency, it’s probably a good time to guess again.

      1. After reading the comment string to the K-OS (Maxwell Smart dials his shoe) story, the spin effect and anti-Republican angle that Malcolm’s stale script provides is enough to choke a horse.

        “Trust the government” is the message. “It’s for the good of the public.” is the message. Anyone challenging this orthodoxy must be crazy or they must have something to hide, or they are the ones out to ‘get you.’

        Malcolm offers the soundbyte that any information provided back to the public would be de-personalized, completely missing the point that the governments’ version would not be de-personalized. “Trust the government.” Sorry, not buying it. Not buying the straight up underlying message. Not buying the anti-republican spin.

        1. ““Trust the government” is the message. “It’s for the good of the public.” ”

          Every time the government grants a patent we’re asked to believe the same.

          “Anyone challenging this orthodoxy must be crazy or they must have something to hide, or they are the ones out to ‘get you.’”

          That rings a bell. As at least two or three posters on here challenging the orthodoxy must be crazy according to at least poster anon. Or else they must have something to hide (aka whatever it is those folks are supposedly constantly dissembling). And, according to the same folks they must be out to get anon’s beloved patent system.

          1. Every time the government grants a patent we’re asked to believe the same.

            Translation: Shut down the patent office.

            Oh, how very Duell of you.

          2. Yes, 6 – but the fact that you have advocated misrepresentations based on “subjective ideas in the mind” and Malcolm has advocated that intellectual honesty is not required on blogs makes the world of difference.

            Svcks to be you.

            1. I’m sorry 6 – you think that somehow that such will change your ability to understand the objective facets of law and to be able to do anything except your self-FAIL tactics…?

              No 6, you need to change for that to happen. You. Personally.

  2. One of the asserted reasons for recording is to police double patenting. Let’s think this through.

    1. 101 allows 1 patent per invention.
    2. Corollary, the PTO has no authority to issue a second patent on the same invention.
    3. If a first-filed application has allowable claims that interfere with an earlier issued patent, the proper rejection is 101.
    4. The rejected applicant can overcome by filing a terminal disclaimer in a proper case. Otherwise, the rejected applicant must, I think, request an interference solely to remove the interfering patent. This should easy, since we are in first to file.

    Now, given the above, applicant should still be allowed go copy claims and request and interference even in a first to file world. 101 provides statutory authority — as it did in 1790.

    Given this, there is no need to monitor ownership. Double-patenting will take care of itself.

    1. 1. 101 allows 1 patent per invention.

      I think your analysis gets off to the wrong start, Ned. 101 allows an entity (“whoever invents”) to get one patent for its invention. 101 is not the authority for interference practice.

      1. LB, sure it does. One of the grounds for finding a patent invalid under a writ scire facias was that a patent on the same invention had been issued to another. There was nothing in this about who was first to invent.

        That notion was carried over into the US with that allowed patents on inventions not known or used. Act of 1790, Chapter 7, 1 Stat. at Large, 109, Section 1. This later was changed to “new.” But the language is broad enough to determine that an invention was not new if it has been previously patented regardless of who invented or filed first.

        So the practice developed to provide for interferences to determine who should get the patent in the case two applicants or an applicant and a previous patent were sought for the same invention. There was NO interference statute in 1790.

        Ultimately, the practice of allowing only one patent on an invention can be traced directly to the common law practice under writ scire facias.

        Moreover, the wording of 101 has changed little since 1790. If it was the basis for interferences then, it is the basis for interferences now.

        1. LB, we should also note that Kappos came out with a PTO position that 102(f) was not necessary as 101 would prevent the PTO from issuing two patents on the same invention.

        2. See: Mowry v. Whitney, 81 U.S. 434, 20 L. Ed. 858 (1872):

          “The ancient mode of doing this in the English courts was by scire facias, and three classes of cases are laid down in which this may be done.

          1. When the king by his letters-patent has by different patents granted the same thing to several persons, the first patentee shall have a scire facias to repeal the second.

          2. When the king has granted a thing by false suggestion, he may by scire facias to repeal his own grant.

          3. When he has granted that which by law he cannot 440*440 grant, he jure regis, and for the advancement of justice and right, may have a scire facias to repeal his own letters-patent.”

          Id. at 439-440.

    2. Ned: Given this, there is no need to monitor ownership.

      Double-patenting is far from the only reason provided for monitoring ownership so your argument fails.

      Moreover, your argument that “double-patenting will take care of itself” is predicated on theoretical assumptions that inaccurately reflect actual practices.

      It seems very strange that this basic fact needs to be repeated but here it is again, Ned: the public has a great interest in knowing who is exploiting a government entitlement granting agency, where those entitlements provide recipients with the power to drag any member of the public into court and potentially ruin that individuals life. Is that really so hard to understand?

      The incessant absurd attempts to equate “patent rights” with “ownership of a chewing gum rights” only proves one thing: a certain class of patent system exploiters is desperately worried that its activities will be revealed to the public.

      1. It seems very strange that this basic fact needs to be repeated but here it is again, Ned: the public has a great interest

        It seems very strange that this basic fact needs to be repeated but here it is again, Malcolm: the proper channel for widespread rules of law to satisfy the public’s needs are through the legislative process – not by fiat of an executive agency.

        The ends do not justify the means. They never have. They never will.

        Is that clear enough for you?

        And one other incontrovertible fact:
        patent infringement is still a strict liability offense.

        You seem to have a bit of trouble understanding what that means and you seem to have this irrational belief that ‘mere users’ somehow are not ‘really‘ guilty of anything.

        1. Surely you don’t object to the public agency entrusted by the public with overseeing such matters at least trying to solve the problem so that they can then report to congress that they didn’t have the ability to fix it correct?

            1. I surely object to any illegal grabs of power.

              And yet Tr0llb0y never saw a junk patent that he couldn’t embrace, nor a troll whose actions he couldn’t defend (at least not without blaming the trolls victim, too).

              Every piece of computer-implemented junk that’s granted is an “illegal grab of power.” And there’s more of that junk flowing out of the office right now than in any time in the country’s history. Every week you can find more of it, and every day someone somewhere is having that junk shoved in their face with a request to please pay up.

              Tr0llb0y doesn’t seem to care much at all about those “illegal grabs of power”, though. Go figure.

            2. Every piece of computer-implemented junk that’s granted is an “illegal grab of power.”

              Because Malcolm says so. How very Carroll of him.

              Now if you want to engage him with legal and factual points, all he will do is stick his fingers in his ears and chant “policy policy policy” all the while refusing to give up any benefits of the innovation he would deny protection to.

              Y.
              A.
              W.
              N.

            3. But what if you and even myself are wrong about the substantive issue and they’re just procedural? I mean, are you all that upset with them attempting it in an arguable situation? Surely you must concede that the situation is arguable and the PTO is entrusted with taking on such responsibilities if they be arguably within their realm. Especially if the pressy tells them to. Right?

            4. Thinking about 6’s “Especially if the pressy tells them to. Right?“…

              All I can say (again) is that both sides of the aisle have one thing in common: politics.

              Is 6 really saying that just because it is the president that dictates [sic] something, that no questions should be asked and push back as to “the ends do not justify the means” should not be put forth?

              Really?

              Astounding.

              6, try some concentrated and critical thinking before you ‘spitball’ and sputter all over the place. Try to realize that the real world is simple not the same as that subjective-in-your-mind-WHATEVERness that you want to ‘politik’ with.

            5. Malcolm, if a claim uses “computer-implemented” in the claim, I agree it signals ineligibility.

              It is amazing though that virtually all of the amicus briefs save a couple (like the AIPPA) argue for the per se patentability of such “junk.”

              The AIPLA brief for example misrepresents the holding of Alappat, citing it for the holding actually made in State Street Bank. The briefs avoid the latter case like a plague given the special treatment the SC gave that case in Bilski. Why do they need to lie? Who is going to call them on the carpet?

              We are under assault, no doubt about it. The powers that be speak through the AIPLA, and they are loud.

              Hopefully, the Supreme Court does something clear and decisive to end this assault on the patent system. One of the things I would for the the Supreme Court call the folks signing these briefs onto the carpet for a chat.

            6. “??? Pull your head out of the sand and try reading some of the comments 6.”

              I did. Even D conceded when he brought the topic up that he couldn’t say right away whether the PTO had authority under 2 or the new legislation. Sounds arguable to me.

            7. “Is 6 really saying that just because it is the president that dictates [sic] something, that no questions should be asked and push back as to “the ends do not justify the means” should not be put forth?”

              Nah bro, ask questions all you like, assert that the ends do not justify the means until you’re blue in the face. In fact, take the PTO to court. Feel right free to do so. But perhaps one day you’ll realize that it is precisely because the pressy has p o w e r that he (or his agency) doesn’t have to give much of a rat’s behind about what you as an individual are saying. He (or his agency) may care somewhat if you cry to a court and beg them to exercise their power. But even then, marginally.

            8. because the pressy has p o w e r that he (or his agency) doesn’t have to give much of a rat’s behind about what you as an individual are saying

              Do you even realize when you self-FAIL as you do here?

            9. “Do you even realize when you self-FAIL as you do here”

              Do you even realize when you use tarded terms that nobody else understands that you may as well not have said them in the first place?

        2. the proper channel for widespread rules of law to satisfy the public’s needs are through the legislative process – not by fiat of an executive agency

          Administrative agencies have rule-making powers. Whether this rule is improperly established or not will surely be decided in due course.

          But that changes nothing about the public interests we were discussing.

          It also goes without saying that most of the patent-friendliest decisions which have led to the rampant abuse that concerns the public were decisions made without anything remotely resembling input by the public. So you’ll excuse me if I’m not impressed by your righteously wrapping yourself in whatever hypocritical “principles” you discovered on the sidewalk today.

          you seem to have this irrational belief that ‘mere users’ somehow are not ‘really‘ guilty of anything

          You seem to be on drugs and arguing with an imaginary person.

          1. But that changes nothing about the public interests we were discussing.

            Incontrovertibly wrong.

            The ends do not justify the means. Can I be any more clear on this?

            The fact that you don’t like how the law really is does not justify the means.

            The fact that you don’t like the fact that software is a manufacture and a machine component does not justify the exclusion of software from patent eligibility that is your crusade.

            You have no facts.
            You have no law.

            Guess what you pound?

            1. anon, In re Benson was overruled by the Supreme Court. Stop talking as if they authorized claims on any invention that recites a computer or a CRM. See Bilski for example, where they cited State Street Bank for rebuke.

              You are the party who is wrong here. You have Rich and Rader in your camp, indeed. But you have the entire Supreme Court against you.

            2. And then correct yourself for trying to apply the dicta in Bilski – as you are surely aware, Bilski did not address computer implemented inventions at all.

              Did you not just get in a huff when someone tried to misplay Supreme Court holdings…? And yet , here you are, doing that very thing.

              For shame, Ned – for shame.

          2. anon, you must understand what was overruled — that a process or a programmed computer that did not produce a new and useful result. The SC made it clear that it was not excluding all programmed computers.

            You have to read what Rich wrote to understand what was overruled.

            1. Ned,

              Once again you are conflating the utility requirement of 101 with the statutory categories requirement of 101.

              How many times must I ask you not to conflate the law?

      2. MM, there is an unstated premise in your observation that patents are dangerous public rights “where those [public rights] provide recipients with the power to drag any member of the public into court and potentially ruin that individuals life is that the patents are dangerous public rights.

        Now, to the extent that patents narrowly protect truly non obvious inventions, and their claims clearly denote their inventions and are providing the public notice function congress intended, then patents are not dangerous public rights.

        But to the extent that the PTO fails to do its job and the Federal Circuit continues to ignore the problem of broad and indefinite claims, and I would agree with you that patents are dangerous and are causing far more problems to the American economy then our founding fathers could have predicted.

        But we disagree on the solution. I am not yet willing to surrender the patent system to be the exclusive province of the wealthy. I hold out hope that we can find a noble knight to take up the cause of sanity and with the help of the Supreme Court rein in the wild and woolly Federal Circuit and discipline the undisciplined PTO.

  3. 35 USC 261 still says “within three months from its date or prior to the date of such subsequent purchase or mortgage.” Right? Or did I miss a change to the statute?

    1. It says it. But a Judge said it doesn’t.

      Just like 101 says processes are patentable subject matter, but a Judge says not if it could be construed as a mental process or not if it involves a law of nature.

      Its irritating when Judges make up the laws as they go along, ain’t it.

      1. Not sure I understand your comment. In any event, there’s a qualitative difference between a court trying to decide what “process” means in the context of the statute, and a court not knowing how to work a calendar.

        1. Pray tell, what is the qualitative difference between a court not being about to work a dictionary and not being able to work a calendar?

  4. It wuold be nice if before enacting something like this the USPTO made an effort to make assignments, name change, etc. documents accessible online. It is 2014. Maybe even connect PAIR with the assignment database like on the trademark side of things.

      1. No, you cannot obtain copies of the actual assignment document. All you can see is the recordation cover sheet information. In contrast, on the trademark side you can view the actual recorded assignment in most instances. For patents you have to send someone to the USPTO to obtain copies.

          1. Malcolm misses with “Another benefit of this rule change may very well be

            The benefit sought in the immediate point is one that can be obtained without any rule change.

            1. Malcolm misses

              Actually it’s you missed, anon, probably because you were so decimated by the whipping administered to you in the previous thread.

              Dennis, is the sort of discussion you enjoy here? It’s the sort of discussion engendered by your blogtroll “anon” and since you don’t seem too concerned about his nutcase behavior, I figure it’s best to simply respond in kind. It’s easy and fun, after all! Ignoring the blogtroll, as everyone has learned, doesn’t slow it down from its personal attacks and its looneytunes claims to greatness (in fact, the opposite is true).

              Anyways, fun times ahead!

  5. Story is rightly viewed as the founder of US patent law, and these opinions of his on the recording statute illustrate one of the reason why he is held in high regard.

    The requirements of the new rules package flouts the recording statute and Story’s opinions in Pitts v. Whitman. They turn a benefit accorded by the statute to the assignee into a curse.

    The mentality of the PTO people behind this rules package is appalling. Story would turn over in his grave.

    1. These recording rules do seem to stretch past the new rule making authority of the PTO. They are clearly–to my mind–substantive as they are requiring more information than is generally required of corporations. I’d say that they will almost certainly lose in court and if this the handy work of the new “director” then we are in for another Duddas era.

      We have already seen that Tarantula is unethical (his mischaracterization of abstract as applying the statute should be enough to have him impeached.) And, now this. What arrogant little minds to think they know better than the law and that they are the law.

      1. But, then we have Lourie, Lemley, Posner, and our own Palin boys. The lynch mob. The witch hunters. The law makers. The smoke machines. Horrific horde.

      2. “What arrogant little minds to think they know better than the law and that they are the law.”

        I think it hilarious that you would characterize them thusly and yet to my knowledge do not put down ol Judge Rich for doing the exact same thing times a gazillion.

        1. Um,

          You do realize that that if any judge – any judge at all – would be an appropriate candidate to not include in such a group would in fact be the judge that helped write the law, right 6?

          Can you try any harder to commit character suicide?

          1. “You do realize that that if any judge – any judge at all”

            Well frankly it is more than a little offensive to the modern senses that any judge would think they know better than the law and that they are the law.

            1. I know what the point you’re trying to make is anon, and you’re missing mine. My point is not the Judge rich was not one of the best people to have helping to interpret what the law means. In fact I concede such. My point is that Judge Rich went above and beyond mere dispassionately interpreting the law (as we want from a judge) to him thinking that he knows better than the law and that he was the law.

            2. In fact I’ll go one further, you see that same sort of attitude in some recent CAFC judge’s opinions. Others are starting to come back down to earth though in recent years.

            3. I understood what you were attempting to say 6 – but you are merely mouthing a subjective view that only exists in your head.

              Have you even read (and understood) what Judge Rich wrote? Do you even recognize that his writings tied directly to the law – as written – and did not in fact (even implicitly) expand what was written?

              You see 6, your habit of simply making things up does not prepare you for an actual intellectually honest discussion.

              You are weaponless in this battle.

            4. “I understood what you were attempting to say 6 – but you are merely mouthing a subjective view that only exists in your head.”

              As opposed to NWPA doing the same? Come now.

              “Have you even read (and understood) what Judge Rich wrote?”

              Too much actually.

              ” as written – and did not in fact (even implicitly) expand what was written?”

              Sure they did. His rulings on functional language being A OK after the adoption of 112 6th, a statute wholly unconnected to standard functional language expanded what was written in 112 6th to an all out endorsement of functional gobbledegook we’re still feeling the effects of 50 years hence. Not to even mention some of his 101 etc. etc. “decisions”.

            5. And I’m not fighting a battle ya re re, I’m still simply noting that it is hilarious that folks like NWPA don’t mind at all when a judge comes along and has an arrogant little mind such that they think they know better than the law and that they are the law

            6. I’m still simply noting

              And I am still simply noting that you are not correct in your “subjective interpretations in your head.”

              Have a nice day!

            7. 6, it is your crowd that is advocating using a judicial exception and not applying the law. (and the new guard Tarantula claims the judicial exception is applying the law the ultimate in not applying the law.)

          2. “6, it is your crowd that is advocating using a judicial exception and not applying the law.”

            Well I wouldn’t say advocating. We already advocated for it, so we should be talking past tense 50 years ago. And then readvocated for it after patent lawlyers just said whoopsie and forgot it for awhile. But as of now it’s already in place as the law brosefus and the courts have been reminded of it. The only court yet to get that through their thick skulls is the federal circuit. I’ve yet to see a district court that has even the slightest apprehension of applying it as tha law. And the USSC has 0 problems with applying it as the law.

            1. It is a whole lot ‘cuter’ than the Malcolm/6 admissions of engaging in intellectual dishonesty because they are ‘politicking.’

              Then again, admissions of Self-FAIL do have a certain ‘cuteness’ to them.

            2. It is a whole lot ‘cuter’ than the Malcolm/6 admissions

              You must still be reeling from the utter devastation unleashed upon you in the previous threads.

              You really svck at this. But we knew that already.

              Dennis, is this the sort of stuff you’re looking for? Because I can easily dish it directly back to your blogtroll “anon” all day if this is the sort of thing you enjoy. Let everyone know how you would prefer that we respond to your blogtroll. Ignoring it doesn’t accomplish much, as everybody here knows.

            3. Because I can easily dish it directly back to your blogtroll “anon” all day

              LOL – it is far more effective when ‘dishing it’ coincides with veracity.

              You see Malcolm, I have that veracity and you do not.

              Perhaps if you lived by a different motto than “Intellectual Honesty Is Not Needed On Mere Blogs” you might (just might) have a leg to stand on.

              How is your list of incontrovertible facts coming along?

            4. I have that veracity and you do not.

              Actuall I have the veracity and you don’t. You must be confused after the pummeling you received on the previous thread and all the other endless beatings.

              Perhaps if you lived by a different motto

              My motto is “dish it back to the nutcase blogtroll ‘anon'” because that, apparently, is the only way to demonstrate to Dennis how wonderful the world will be if we all act like his favorite blogtroll.

            5. Not sure what the difference is between “dish it back” and the tried and true AOOTWMDs.

              But I must say, the absence in Malcolm’s posts of even trying to fake the law with his Policy-table pounding antics is a bit refreshing.

      3. They are clearly–to my mind–substantive as they are requiring more information than is generally required of corporations.

        That’s an interesting standard, but I don’t think it’s the one the Federal Circuit is likely to use.

        In Tafas, the court said, “A procedural rule does not become substantive simply because it requires the applicant to exert more effort to comply, so long as the effort required is not so great that it effectively forecloses the possibility of compliance.” It also said, with respect to the ESD requirements for applications w/ greater than 25 claims, “On this record, we see no persuasive reason to prohibit the USPTO from requesting the information required by Final Rule 265, even if the applicant must take action to acquire that information.”

        My guess is that the argument that “some applicants won’t like it” will not persuade the Federal Circuit that this proposed rule is invalid as “substantive.”

        1. Leopold,

          Which version of Tafas are you referring to? the vacated version or the (controlling) district court level that found the Office attempts to be non-palatable?

          1. Which version of Tafas are you referring to? the vacated version or the (controlling) district court level that found the Office attempts to be non-palatable?

            I was referring to the “non-controlling” Federal Circuit case. The next time this issue goes to the district court, do you think it will ignore what the Federal Circuit had to say?

            1. I hope so – isn’t that “vacated” means to do, and what the fact that the lower court decision was refused vacatur means to do?

              Feel free to talk with someone who understands the legality before responding.

            2. Feel free to talk with someone who understands the legality before responding.

              anon does’t understand legality and that’s evident from the endless beatings he’s taken here and in previous threads.

              You really do svck at this more than everyone else, anon. It’s difficult trying to imagine anyone being more wrong about anything than you are. But then what else can we expect from someone like you who voluntarily admitted that until last week he thought that the Supreme Court could not overturn the Federal Circuit?

              Fun times! Enjoying this, Dennis? He’s you’re blogtroll. This is what he does, day in and day out. I’m just playing his game, which must be really entertaining … for someone out there. It’s surprisingly easy, I’ll say that much.

        2. … and I thought that you were going to remain quiet on the legality of this issue as you (seemingly) admitted that you did not understand this area of law…?

          ..or is the obvious decimation of your idol Malcolm too much to bear?

            1. he enjoys seeing you and your intellectually dishonest @$$ kicked all over the place.

              I highly doubt that, Trollboy, because I don’t think Dennis can see the fantasy movies inside your nutcase mind.

            2. No need to peer inside my head, when a multitude of fine examples – incontrovertible ones even – are easily viewed here.

              Man, you really svck at this.

            3. a multitude of fine examples – incontrovertible ones even – are easily viewed here.

              Yes, there are a multitude of examples of your incontrovertible nutcase ramblings here.

              <iMan, you really svck at this.

              Actually I’m the best commenter here by a long shot, providing more substantive comment than ten million of you combined.

              You’re the one who sxcks at this.

              Dennis, is this the sort of stuff you’re looking for? Because I can easily dish it directly back to your blogtroll “anon” all day if this is the sort of thing you enjoy. Let everyone know how you would prefer that we respond to your blogtroll. Ignoring it doesn’t accomplish much, as everybody here knows.

            4. Actually I’m the best commenter here by a long shot, providing more substantive comment than ten million of you combined.

              You’re the one who sxcks at this.

              LOL – so declares the RQ/HD.

              As all about the RQ/HD, he runs away from any discussions on the merits.

              Try facing reality Malcolm.

            5. As all about the RQ/HD, he runs away from any discussions on the merits.

              No, it’s actually you running away, TJROS. That’s because you were never able to answer any questions about the controlling law, coupled with your endless QQing re SFSLIL.

              Are you going to try to deny your voluntary admission that software is equivalent to sheet music? That’s what we’ve come to expect from racists like you. Try facing reality instead of burying your nose in Mein Kampf.

              Enjoying this Dennis? It’s pretty fun. It’s also pretty much all we get from your favorite blogtroll thirty times a day, 365 days a year.

        3. LB,

          Be careful. That quote you take from Tafas doesn’t reflect the issue of compliance with the Paperwork Reduction Act, nor the Regulatory Flexibility Act, both of which were violated by the USPTO in rulemaking in the Tafas case, as was pointed out by David Boundy and others.

          1. EG: That quote you take from Tafas doesn’t reflect the issue of compliance with the Paperwork Reduction Act

            But it does “reflect the issue” of whether the rule is “substantive”, as that test was applied by the Federal Circuit. I think that was LB’s point.

        4. “A procedural rule does not become substantive simply because it requires the applicant to exert more effort to comply, so long as the effort required is not so great that it effectively forecloses the possibility of compliance.”

          Yeah that’s certainly the rule. The only thing that makes me apprehensive is that the rule extends to after proceedings at the office are concluded. Now the PTO could write a rule that governs during prosecution and during reexams etc.

        5. LB: But, all of that information for the ESD was for a patent application. There was some reason for it that related to the patent application. In this case, there is no reason for this additional information other than exerting a policy reason for the enforcement of patents. So, I think there is an argument that it is substantive rule making.

    2. Ned’s “Story is rightly viewed as the founder of US patent law

      I do have a problem with that statement, not withstanding the current discussion on the interpretation of the scant statutory basis of benefit to bona fide purchasers of the freely and fully alienable property that is a patent.

      The judiciary is not – and cannot be – the founder of patent law in the US.

      Our constitution is explicit as to which branch of the government has that distinction (and that branch is not the Executive branch either, thus ‘the means’ very much still means something).

      Yes, the legislative branch did ‘punt’ in a fashion in the first patent law by allowing a common law evolution approach to defining ‘invention.’ Of course, this ‘allowance’ was repealed in 1952, after watching that closed group of nine take a decidedly anti-patent stance that endangered the entire system. But this only serves to provide notice that we should not glorify the wrong branch making patent law in the first instance – be it either the judiciary or the executives.

      However, the proper action of the Court would have been to ‘just say no’ to the addictive nose-of-wax power. Just say no to any branch writing (even implicitly) patent law in a first instance. Only one branch has the constitutional authority to do that.

      Let’s learn from history – not repeat the mistakes of history. Let’s learn that allowing another branch to write patent law (be it here in the gross expansion for new benefits to new parties – or the radical allowance of power to far-too-closely-managed Article I court of the PTAB) will only lead to tyranny (Ned, queue the Federalist papers – do you remember the number of my recent quote?).

      1. “However, the proper action of the Court would have been to ‘just say no’ to the addictive nose-of-wax power. Just say no to any branch writing (even implicitly) patent law in a first instance. Only one branch has the constitutional authority to do that.”

        Well anon just for the sake of a brief discussion let’s say I agree with you. What do you suppose congress’s reaction to them doing so in say … Benson would have been?

        1. It is not dispositive (albeit often presumed so) what Congress reaction to any particular decision may be.

          In the case of Benson, the Congress may have witnessed the judicial tug of war and simply allowed the cabining of Benson (and Flook for that matter) in Diehr (as stated by the Supreme Court in Bilski), as well as the direct quote in Benson concerning the fact that the Court was not holding that software was not patent eligible to be ‘enough’ so as to not be concerned enough to speak up.

          1. anon, in Morse, the court decided patents were for useful applications.

            Benson, Flook, and Bilski all ended in numbers. Diehr used a number.

            That is all one really needs to know.

            The Supreme Court and the lower courts are tripping over themselves with useless dicta and theories. The actually holding of the case is much more informative.

            And, I agree with you that a claim limited to a computer is not covering a mental process. That means that Benson was not really decided on mental process grounds. That was just dicta.

            Also, the “wholly preempt” notion was tossed in Flook.

            The only thing left is the “useful application” basis for holding the claims ineligible; and that was common in all the cases.

            1. Ned,

              Do I need to remind you that Morse was ‘allowed’ because the Congress in the initial patent law ‘allowed’ the Court to set by common law means the definition of ‘invention’ but – and this is critical – removed that power in the 1952 Act?

              All one really needs to know is that the aspect of utility in 101 is separate from the aspect of patent eligible category.

              Stop the conflation.

              You are so very close to grasping the correct view of 101.

          2. I’m not asking about any dispositive things or what might have happened in the case of Benson as it was actually decided or what congress may have witnessed and allowed in Benson Flood and Diehr. Or about any quotes either. I’m not asking about any of that.

            I’m asking: what you think is the most probable thing that would have happened had they have decided to do as you propose in the Benson case? If you’d be so kind as to weigh in on that we’d all be much appreciative I’m sure I know I would.

            1. Asked and answered 6 – Congress did not act because one can plainly read fromBenson that the decision did not attempt to outlaw software as a patent eligible subject matter.

              (read the decision again and note the quote about “We do not so hold“)

            2. “Congress did not act because one can plainly read from Benson that the decision did not attempt to outlaw software as a patent eligible subject matter.”

              I’m not asking why congress did not act.

              I’m asking, in a hypothetical situation where YOUR SUGGESTION AS TO ESCHEWING THE “NOSE OF WAX POWER” was hypothetically adopted in Benson, note that this is not what happened historically, what do you think probably would have been the congress’s reaction? (note the answer here has nothing to do with what actually happened historically).

              Jes us chri st how can you not understand this simply question?

            3. “6 – I just answered your question. – see the post at 4:30 pm.”

              So as an answer to how congress would probably act in a hypothetical situation that never occurred you answer that congress did act in a certain way. Huzzah for tar dation!

            4. You were not exactly clear there 6 – as I answered the question you asked.

              You may have wanted to ask a different question, sort of like what would Congress do if the Court became too anti-patent and attempted to have a Flash of Genius standard – the answer to that is already in history: the 1952 Act.

              But did you really need me to point that out to you?

            5. “You were not exactly clear there 6 ”

              OMF G I asked the question two different ways! How many ways must one ask an extremely simple question before you’ll grasp the question? You still don’t even understand the question!

              “sort of like what would Congress do if the Court became too anti-patent and attempted to have a Flash of Genius standard”

              Ok, so in your tar d phraseology what would congress HAVE DONE if the court became too PRO-patent and attempted to have done away with their “nose of wax” treatment of 101 (as you call it) during the Benson case?

            6. “Try again.”

              It’s the same question, having been presented 3 times now, all in different language to accommodate your ta rdself. I’m not “trying again”. You’re a ta rd. You’re obviously not getting it.

  6. Dennis,

    First, the correct designation for the patent assignment statute is 35 USC 261, not 35 USC 161.

    Second, and more important, there’s a huge difference between the USPTO providing for recording of assignments vs. the proposed rule for “attributable ownership.” Without a viable way to record such assignments, as is now provided by the USPTO, the benefit provided by 35 USC 261 to prevent transfer the transfer of rights to other than a “bona fide” purchaser would be a nullity.

    Third, such recording of assignments is still voluntary, even in view of 35 USC 261 if you don’t care to be protected against “bona fide” purchasers. By contrast, the proposed rule makes filing of such statements of “attributable ownership” mandatory on penalty of abandonment the application, i.e., complete loss of rights. That’s much more than a trivial difference, and one that illustrates why this proposed rule is not only substantive, but outside the authority of the USPTO to promulgate, even in view of 35 USC 261.

    1. That’s much more than a trivial difference, and one that illustrates why this proposed rule is not only substantive

      The fact that a new rule is “much more than trivially different” from an old rule hardly suffices to make the new rule “substantive”.

      As Dennis has pointed out, the underlying statutory law has changed “substantively” to change the focus from inventorship to ownership.

      By the way, Eric: how are the impeachment proceedings going? I’m somewhat shocked that someone who would advocate for the impeachment of judges who use the term “monopoly” in a patent case would also be opposed to rule that forbids patent applicants and patentees from hiding their identities behind layers of corporate subterfuge. Shocked, I tell you!

        1. Careful Prof. Crouch, less Malcolm starts accusing you

          Accusing Dennis of engaging in “shameful” behavior and/or “chumming” is one of your regular activities, TB, not mine (or anyone else’s, really). Please try not to project your weird habits onto others.

          1. Chumming is what it is.

            Sorry Malcolm, but that dark figure on playing cards that looks like an upside down heart on a stem is called a spade.

            As for baseless accusations – you be the king of that, my friend.

  7. Full cite to Pitts v. Whitman (1843) here:

    link to law.resource.org

    There’s not much discussion of, e.g., patent trolling by non-practicing or patent assertion entities and/or hiding one’s identity behind layers of shell companies for the purpose of avoiding detection of conflict at the PTO or elsewhere. And there’s no wonder why that is the case.

    Starting around 1840, the Pitts manufactured and sold threshing machines and protected their products with patents. They did so at a time when roughly 500 patent grants per year (for the entire country, not just for the Pitts!) was the steady norm and, as far as I can tell, nearly all of those patents covered goods being manufactured by the patent owner.

    If present trends continue we will soon be looking at a grant rate three orders of a magnitude greater than the 1840s grant rate. To put that in perspective, if the US population kept up with the patent grant rate, there would be at least 1.5 billion additional people living here instead of the current 300 million (also of note: the population growth rate is presently slowing while the patent grant rate is exploding).

    As Dennis notes, there has been a fundamental change in the patent statutes since that time. The identity of the inventor is less important than the identity of the entity who is applying for the patent. Inventors were not allowed to hide their true identities behind layers of legal screens and there is no reason that applicants should be allowed to engage in this practice when seeking an entitlement from a government agency.

    Without a requirement for disclosure (and an appropriate stick), applicants will inevitably continue to play shell games with the agency and the public by hiding their ownership of patents which were obtained, e.g., by arguing that “X is equivalent to Y”, while simultaneously seeking, acquiring and/or asserting patents that were obtained by arguing that “X is completely different from Y.” This can not be permitted unless we wish to watch the US patent system collapse further into a cesspool of abuse and exploitation.

    1. as far as I can tell, nearly all of those patents covered goods being manufactured by the patent owner

      You need to do two things Malcolm:

      1) revisit the award winning historical research establishing that the system was not set up to be limited to “cover[] goods being manufactured by the patent owned” and was in fact set up to cover well beyond that scenario, and

      2) revisit controlling law of that 1908 Supreme Court case.

      Then you can really ‘tell.’ Of course you already know this and of course you would rather NOT know this. so what exactly does the weasel phrase “as far as I can tell” mean here? The word ‘dissembling again comes to mind.

      Reminds me of a famous saying:
      When you have the facts, pound the facts.
      When you have the law, pound the law.
      When you have neither, pound the table.

      Malcolm is once again pounding the table of his paper policy agenda, with neither law, nor facts to support how he would want the law changed to be (let alone changed by the wrong branch of the government in his inimical WHATEVER ends-justify-the-means style).

        1. Do tell – and let’s all see if you are ready yet to have an intellectually honest conversation.

          Intellectual honesty: give it a try.

          1. Intellectually honesty

            You have none and that’s been demonstrated repeatedly. You must still be reeling from the utter devastation unleashed upon you in the previous threads.

            You really svck at this. But we knew that already.

            Dennis, is this the sort of stuff you’re looking for? Because I can easily dish it directly back to your blogtroll “anon” all day if this is the sort of thing you enjoy. Let everyone know how you would prefer that we respond to your blogtroll. Ignoring it doesn’t accomplish much, as everybody here knows.

    2. Inventors were not allowed to hide their true identities behind layers of legal screens

      Incontrovertibly false.

      Patents have always been fully and freely alienable, and your so-called ‘hiding’ was always an option.

      1. “Inventors were not allowed to hide their true identities behind layers of legal screens”

        Incontrovertibly false.

        What’s false about the statement?

        Patents have always been fully and freely alienable

        Non-sequitur. I don’t recall inventors being allowed to sell their inventorship. Happy to be wrong about that if you’ve got evidence to the contrary.

        In addition, your habit of avoiding discussion by stating what “has always been” is not very compelling when the facts on the ground have changed quite radically (I know you like to pretend that’s not the case; that’s just one of many reasons your endless puffing about your “powers” are a pathetic joke).

        1. Howard Hues millions were made from an a drill bit invention sold to him in a bar. Howard filed for the patent in his own name. I don’t know if that was legit back then or not. But you could start your investigation there.

        2. Your reply of “Non-sequitur” is simply false (and in typical Malcolm fashion, the piling of falsehood upon falsehood begins).

          Until you do the two steps I advised in my post at 4.1 and as long as you continue to dissemble about the historical facts, your ‘subjective view’ here is meaningless.

          Come back to planet Earth when you are ready to discuss the actual law, the actual facts, and have an actual intellectually honest discussion.

          Happy to be wrong about that if you’ve got evidence to the contrary.

          Asked and answered. Thanks. Pay attention.

          Your last paragraph is mere posturing and your attempt to substitute naked policy for law and facts. In other words, it is you merely pounding the table.

    3. You know, MM, you still haven’t connected the dots. Why is it important to know the beneficiaries of a trust if you know the trustee?

      Second, why is it not sufficient that deny damages to anyone not the record owner — such that a notice of infringement would not actually place anyone on notice for damages purposes unless it was made by the/a record owner?

      1. Why is it important to know the beneficiaries of a trust if you know the trustee?

        We’re not talking about trusts and trustees. We’re talking about patent owners.

        Second, why is it not sufficient that deny damages to anyone not the record owner

        Because obnoxious patent owners do plenty of damage to the public without ever stepping in foot in court.

        If you aren’t obnoxious, of course, then you have nothing at all to hide. You are surely aware, Ned, that many (most?) patent assignments already do identify the entity with the controlling interest in the patent. It’s really not a big deal for that information to be disclosed … unless you have something to hide.

          1. You think that ed snowden would be on your side in this exchange? Seriously? The guy that gave up all the stuff that you’re wanting so much of (money from nonsense government policies) just so that he could help the public out? Seriously? You’ve got to be joking. Just because he’s pro-privacy in some respects doesn’t mean that he’s all about enabling extortion rackets via government entitlement programs.

            1. It’s really simple 6: the ends do not justify the means and the means in both cases are more information on personal property in the hands of the government for the ‘purpose’ of the public’s safety.

              Or did you miss the excuses given by NAS?

              Wake up son.

            2. “the ends do not justify the means”

              You’re very fond of pointing this out but you seem to forget that we’re talking about government action (means) causing the problem in the first place issuing patents. Here, perhaps the ends of having someone scribble down a new function for a computer for the public to read about doesn’t justify the means of government backing troll’s demands, especially while shielding the person(s) actually behind it through creating faux “entities”.

              You seem to start in the middle of the analysis, like every single time.

            3. “the means in both cases are more information on personal property in the hands of the government for the ‘purpose’ of the public’s safety.”

              And just as an aside I was unaware that the government was all that concerned in the national security theater with people’s personal property. I mean, to the extent it might link people to terrorism sure, but I’m pretty sure that isn’t the focus of say, PRISM etc.

            4. 6’s mantra of “I wasn’t aware” pretty much shows why practically every single one of his posts is quite meaningless.

              Thanks for the additional self-FAIL 6.

            5. “6′s mantra of “I wasn’t aware” pretty much shows why practically every single one of his posts is quite meaningless.

              Thanks for the additional self-FAIL 6″

              Do you really think that helps to move the conversation forward tard? Or do you think the above is the kind of mindless dribble that MM is constantly calling you out for of late?

              And you say you’re not here to just troll. Everytime you get some sht shoved back in your stup id fuc king face you just say “meh you’re self-failing” or “how alice of you” just trolling away for someone to come and cuss your dum as the fuc k out.

              Denise you want to know why your blog is full of venemous bull sht? There’s exhibit #100000 right above.

            6. 6 misses (by a mile with “Do you really think that helps to move the conversation forward tard?

              LOL – horse, water. I can only do so much, and then the AAA JJ quip takes over.

            7. full of venemous bull sht

              Sorry 6 – you do control how you react.

              Try again with your own self-professed “everything-subjective-in-the-mind- so anything-goes” CRP.

              Or ask Malcolm and his self-professed “intellectual-honesty-is-not-required-because-this-is-merely-a-blog” CRP.

              Don’t be sad when you make your bed and have to sleep in it.

              You always have the option of posting better (capability may be a different thing…)

  8. Possibly only a nit, but is the citation to Tafas correct in the sentence:

    The backstop here is Tafas v. Dudas, 559 F.3d 1345 (Fed. Cir. 2009) (vacated)

    Should not the citation be to the underlying district court case? After all, the fact that vacatur was denied to the lower court ruling does have legal impact.

  9. “In considering USPTO authority for its expansion of the recordation requirement, it makes sense to focus on 35 U.S.C. § 2. That provision provides for a set of general powers – giving the Office the power to establish regulations to “govern the conduct of proceedings in the Office.””

    And pray tell, how does the USPTO reach the conclusion that a sale of a patent, say 15 years after issuance, is activity that occurs “in the Office”?

    1. “And pray tell, how does the USPTO reach the conclusion that a sale of a patent, say 15 years after issuance, is activity that occurs “in the Office”?”

      I can’t say for sure but perhaps it is because a. there are maintenance fees to be paid and making sure the owner is paying them is part of that proceeding before the office or b. ownership of a patent is a proceeding before the office. But who knows what theory they’re going under? We’ll probably get a fun case to hear all about it shortly!

      1. I believe the last maintenance fee is paid around year 12. Additionally, I doubt the Office has any interest in WHO pays the fee, as long as it gets paid.

        Are you saying the Office would not accept payment from a licensee, for example, wherein, for tax reasons or whatever, the license agreement was such that the licensee agreed to pay the maintenance fees?

        What about where the inventor/owner runs into hard times and her parents write a check for the maintenance fees. Is that a violation of some rule or law? I think not.

        1. MPEP 2515: “While anyone may pay the maintenance fees and any necessary surcharges on a patent…

          (just in case the ‘subjective’ question comes up)

        2. “Are you saying the Office would not accept payment from a licensee, for example, wherein, for tax reasons or whatever, the license agreement was such that the licensee agreed to pay the maintenance fees?”

          I’m just spitballing man, I could care less about those payments. I both a. do not care what the PTO’s theory is, b. do not care if they have authority to pass the rules and c. see the proposed regulations for what they are.

          Specifically these proposed rules are the beginning of the government machine churning to life to end the troll practices of hiding the true ownership. Here the PTO is generating a “we tried to fix this problem” so that they and the people trying to get this passed in congress can bolster their whining to congress (more power to them imo). Just like with the claims and con rules. As I noted at the time, it was either get those or get fee setting authority, it didn’t matter which. Guess what happened? Whether the PTO does it by rule, or the congress is forced to act, it matters little to me. The beginning of the end has arrived one way or tother.

          The thing that trolls, and some attorneys on here, don’t seem to understand is that the thing that is most valuable to them is to fly under the government radar, like small amounts of fraud in any large government program. Once the fraud becomes an appreciable amount and the government starts to take note, the fraudsters days are numbered.

          1. Once the fraud becomes an appreciable amount and the government starts to take note, the fraudsters days are numbered.

            No doubt. And the patent trolls and their defenders certainly are aware of this fundamental fact of life.

            That’s why it’s so funny to watch them wrap themselves in their flimsy “principles.”

            Like Eric “Impeachment” G has principles beyond “MORE PATENTS ARE TEH AWESOME”? That’s pretty funny. Almost as funny as the apparent inability of the patent teabaggers to keep a lid on their far-beyond-the-fringe private thoughts.

          2. “The thing that trolls, and some attorneys on here, don’t seem to understand is that the thing that is most valuable to them is to fly under the government radar, like small amounts of fraud in any large government program. Once the fraud becomes an appreciable amount and the government starts to take note, the fraudsters days are numbered.”

            Thanks for that paragraph; it’s very well put.

            I do expect, though, that the trolls will be ingenious in finding ways to continue their legalized fraud and extortion. Certainly they will be much more innovative in their schemes than any of their garbage patents.

            1. the trolls will be ingenious in finding ways to continue their legalized fraud and extortion

              I think they’ll just be even more stoopit and transparent about it until the find some other grifting scheme that’s more attractive to them. And the worse they behave, the louder they’ll be about blaming their victims for their behavior, and the louder they’ll complain about being persecuted.

              These are quite possibly the most deluded, arrogant, self-important people in our political system. They make the average money-grubbing lowlife Republican freedum-lurvin’ bigots look like truly outstanding human beings.

            2. “I do expect, though, that the trolls will be ingenious in finding ways to continue their legalized fraud and extortion.”

              Legalized fraud? Exactly what is that?

          3. “I do not care what the PTO’s theory is, do not care if they have authority to pass the rules.”

            Well done 6! An autocrat in the current government mold to be sure.

            “The more you tighten your grip, the more star systems will slip through your fingers.”

            1. Tour I have no dog in this inventorship fight, why should I care? If you have a reason I should care perhaps I can look into caring. Though I don’t know what my caring is going to accomplish.

          4. 6, “Troll practices of hiding the true ownership.”

            I still do not get this. Take is slow that I may learn.

            Why would anyone hide the “true” ownership of a patent and why would that make any difference to anyone who theorectically has a obligation not to infringe regardless of ownership.

            Now damages … I think one cannot properly be placed on notice of infringement for damages unless the owner is identified. I think the courts would so hold if the issue were raised.

            Recall, one does not have a right to file suit unless one demonstrates ownership. Likewise, the law implies that one might sue for declaration of noninfringement if accused of infringement. If one cannot determine who owns the patent from a notice of infringement, one cannot properly file such a DJ action. From this one can deduce that there can be no proper those of infringement unless the ownership of the patent is made clear by the patent office record or in the notice of infringement itself.

            1. Existing civil procedure matters already cover the filing of suit aspect Ned.

              This has already been shared (and impolitcally ‘mocked’ by Malcolm in his attempts to kick up dust).

            2. “Why would anyone hide the “true” ownership of a patent and why would that make any difference to anyone who theorectically has a obligation not to infringe regardless of ownership.”

              There’s a variety of reasons that have been expounded upon at some length on here Ned. If you just missed all those I’m sorry I don’t have the time to take it slow today to run you through them especially as I have barely any expertise or knowledge on the subject. I don’t have that much of a position or a stake in these particular proceedings other than the overall reputability of the patent system and just my own general lols for the day. When you have national radio stories finally getting around to shining a light on troll practices and the country starts to see and understand the “shell game” being played it brings the patent system into disrepute.

              Generally though iirc:

              Companies forming shell companies to sue other companies so that they can’t be counter-sued.

              Folks or companies avoiding things like possibilities for sanctions after their woefully incomplete filings because their shell corp has no assets to pay the sanctions.

              General underhandedness and appearance of underhandedness. Bad image for the patent system as a whole. Portrayal as a secretive little mafia type shake down extortion ring.

              Sometimes tax gaming/avoidance or worse. (this is why these rules are of interest to the IRS)

              To hide from the state which has a legitimate interest in knowing how its entitlement program is progressing just how it is progressing.

            3. 6,

              It is fully LOLable that you do not see that the gamut of reasons for the changes you are proposing expressly show that the ‘law’ being promulgated is substantive in nature and far beyond the authority of the patent office? The more you talk, the more you destroy the attempt by the Office.

              The very fact that is implicates corporations law and tax law should open your eyes.

              Clearly what is being attempted here is illegal. It simply does not matter how pretty you attempt to make the ends appear.

            4. Further,

              If the State wants to take any type of appropriate action, then the State must take that action through appropriate means.

              Such far-reaching ends of changing corporations and tax laws – if those are the ends – must be legitimately vetted through the accepted procedures.

            5. “It is fully LOLable that you do not see that the gamut of reasons for the changes you are proposing expressly show that the ‘law’ being promulgated is substantive in nature and far beyond the authority of the patent office?”

              Well anon, I haven’t really looked into the actual newly proposed rules so I hesitate to pronounce so hastily but yes, if I had to spitball on whether they’re solely procedural or have too much substantive impact to be considered procedural then I would likely (and hypothetically, this is not legal advice or an official statement) say that they’re substantive. I do however reserve the right to change my opinion when I have been able to better inform myself about the actual proposed rules. There are only so many hours in a day.

              And like I mentioned above, I don’t really think it matters if they’re ultimately ruled more than procedural to the point of being substantive and outside the newly expanded powers of the PTO. All they’re doing is manufacturing a “we tried to fix the problem”.

            6. 6, thanks. But even is all THAT were true, simply notifying people that a patent is held by an LLC does not change the fact that the patent is held by the LLC. The complaint is that people cannot countersue holding companies, not that one does not know that the patent is held by a holding company.

              One needs to DJ the owner of the patent when notified of infringement. I think that should permit one to DJ the record owner if the owner is not identified in the notice of infringement. If the “true” owner does not defend, then so be it. The judgment should be binding on the true owner as a privy.

            7. “All they’re doing is manufacturing a ‘we tried to fix the problem’.”

              Why are they spending their time doing that? Why don’t they fix the problems they can actually fix? Did they not waste enough time and money on the failed continuation rules? The failed Board rules? Why don’t they take up Aharonian’s suggestion and hire some actually competent IT folks and provide examiners with better access to more non-patent prior art?

            8. Why would anyone hide the “true” ownership of a patent

              What’s the point in answering this question Ned if you’re going to continue to pretend that nobody is answering it?

            9. “Why are they spending their time doing that? Why don’t they fix the problems they can actually fix? Did they not waste enough time and money on the failed continuation rules? The failed Board rules? Why don’t they take up Aharonian’s suggestion and hire some actually competent IT folks and provide examiners with better access to more non-patent prior art?”

              They’re working on a number of problems currently brosef. As to how much time or money was “wasted” on the C and C rules that is a matter of opinion. Failing to get those rules permitted enhanced arguments for fee setting authority. Which they then received and may not have but for that fiasco. As to the board rules, I forget which you’re talking about, seems like they did pass at least some new ones.

              As to that other dude’s suggestions, I’m sure they’re wonderful and I’m sure that people in the admin would love to discuss such with him. If he knows of IT people that are within our budget and we can get rid of our old ones for new competent ones who knows what might happen? As to NPL, brosef I have quite a bit of access right now, you just have to know how to use it (which I for the most part have learned) and it gets easier with every passing day as more NPL is put online. A database that related a huge chunk of NPL by art would be SAWEET though. Such would probably cost a cool billy+ tho. I don’t think we have such a billy.

              You should keep in mind though that for a lawyer you don’t seem to have the slightest clue as to how to get your way legislatively. Watch and learn padawan. 3 years from now you’ll be recording your ownership in the PTO by law or something that gives the same desired effect will happen. That’s how the government rolls. They play for the long game.

            10. “What’s the point in answering this question Ned if you’re going to continue to pretend that nobody is answering it?”

              Seriously I was hesitant to even answer. He has a real habit of just ignoring sht when people tell him something.

            11. 6, in another example of an irony factory going KA-BLOOEY, responds to Malcolm with “He has a real habit of just ignoring sht when people tell him something.

              LOL – why, that sounds exactly like the CRP-Run away from counterpoints- and CRP again tactics.

              A lovely AOOTWMDs.

            12. “Failing to get those rules permitted enhanced arguments for fee setting authority.”

              Nice revisionist history.

              “As to that other dude’s suggestions, I’m sure they’re wonderful and I’m sure that people in the admin would love to discuss such with him.”

              You’d be on wrong on that too. But you’re used to being wrong, so not much change there.

              “If he knows of IT people that are within our budget and we can get rid of our old ones for new competent ones who knows what might happen?”

              Your office of the CIO is a cluster foxtrot. Has been for years and years and years. Don’t need any money to change that.

              “As to NPL, brosef I have quite a bit of access right now, you just have to know how to use it (which I for the most part have learned) and it gets easier with every passing day as more NPL is put online. A database that related a huge chunk of NPL by art would be SAWEET though. Such would probably cost a cool billy+ tho. I don’t think we have such a billy.”

              Maybe if the PTO hadn’t spent $900M+ on the first generation EFS, which resulted in about 100 applications being filed electronically, they would have that billy. But isn’t your new fee setting authority, that you got from proposing the massively wasteful continuation rules, taking care of that?

              “You should keep in mind though that for a lawyer you don’t seem to have the slightest clue as to how to get your way legislatively.”

              The lawyers lobby doesn’t have nearly as much money to buy votes as the corporate lobby that wanted the AIA has. Even somebody as simple as you should have been able to figure that out.

              “Watch and learn padawan. 3 years from now you’ll be recording your ownership in the PTO by law or something that gives the same desired effect will happen. That’s how the government rolls. They play for the long game.

              I wouldn’t be surprised if the corporate lobbyists got something passed by Congress. But to suggest that it’s only going to get done because the PTO does the old “we tried, and failed, so now we’re throwing up our hands in defeat” routine is pretty silly. Even for you.

            13. 6, Malcolm,

              No, I asked the question because I really wanted to know the answer, because it was not selfevident

              Now, I can imagine a Big Corp. selling a patent to Erich Spangenberg. ES puts the title in an LLC, and Big. Corp. takes an interest in the LLC.

              Is that hiding, or is it a way of structuring the deal economically?

              Big. Corp. cannot hide the fact that the inventor on the patent was its employee, or that it once owned the patent. Any attempt to do so would be futile.

              So I do not get why people are complaining.

              I do see an issue if a lawfirm sends an anonymous notice of infringement. Not identifying the owner might be an attempt at avoiding a DJ, but I think the notice company could still file the DJ against the record owner and have any judgment be binding on successors by operation of law (privity.)

              MM make hypo about prosecuting a number of applications with different owners. So what? The PTO would simply reject the claims based on the earliest filing date, or if all were the same date, based on the first to issue. The onus would then be on the second to issue to somehow file a terminal disclaimer or else his patent is gone. (It may be that we will have a form of interference in the future whereby a first to file but second to issue patent on the same invention would have a right to declare an interference with the first to issue solely to have the interfering claims cancelled.)

            14. “The lawyers lobby doesn’t have nearly as much money to buy votes as the corporate lobby that wanted the AIA has.”

              Cry me a river. I’m talking tactics here anyway not straight up $$$. And I’m certainly not talking about your lobby. I’m talking about you.

              “I wouldn’t be surprised if the corporate lobbyists got something passed by Congress. ”

              It isn’t just the corporate lobbyists t ard. Thems government has taken note of thems trolls (likely you amongst them). You know, the people in the 4th branch of gov, a couple senators here and there, the pressy. Those people. Maybe you missed the part where the sleeping giant known as the government noticed the trolls tomgamery? If it was just corporate money you were fighting the battle would be the same as it was 5 years ago and nothing would be happening.

  10. The Office under the Executive Branch decides fully on its own to throw out the Justice Story (Judicial Branch) interpretation of the Congress (Legislative Branch) meager writings.

    The AIA grant of authority is clearly limited in its intent and does not reach here.

    Yes, friends, this does make for some good drama.

    1. The AIA grant of authority is clearly limited in its intent and does not reach here.

      That’s rather conclusory. Got anything to back that conclusion up? Was there some statement in the Congressional record about exactly where those limits begin and end, with respect to this particularly issue?

      1. Actually yes, Malcolm, there is quite a bit in the congressional record.

        Glad you asked.

        (D’Oh! – said in the best Homer Simpson tones)

        1. Actually yes, Malcolm, there is quite a bit in the congressional record.

          Quite a bit of what, exactly?

          Show everyone where the AIA “clearly” limits the PTO’s rulemarking authority with respect to this issue.

          1. Show everyone where the AIA “clearly” limits the PTO’s rulemarking authority with respect to this issue.

            You are not even on the right issue with that question, Malcolm.

            The question is more properly phrased, what was the legislative intent of the AIA changes regarding inventorship/ownership?

            That question has absolutely ZERO to do with the assignment recording law’s intent as the record of Justice Story’s interpretation clearly evidences.

            It’s amusing to watch you attempt to kick up dust on an item so far removed from the issues here.

            You really svck at this.

            1. ..and because I am feeling generous, the intent of the AIA legislation was to counter any adverse affects of the change in speed that might be necessary from a First to Invent to a First to File system.

            2. the intent of the AIA legislation was to counter any adverse affects of the change in speed that might be necessary from a First to Invent to a First to File system.

              Was the AIA “clearly limited” to that intent and that intent alone? That’s what you asserted upthread. Where’s your support for that assertion? Presumably you have clear support. So let’s see it.

              You really svck at this.

              No, you do. In fact, you svck at everything.

              Fun game. Dennis, are you enjoying the blogtroll “anon” and his leadership with respect to “civil discussions”? Because if you aren’t, you should say so. And if you are, then I’m going to continue to dish it back to your nutcase blogtroll in kind. It’s easy to do, and it certainly seems to be something that you wish to encourage.

            3. And if you are, then I’m going to continue to dish it back to your nutcase blogtroll in kind

              That might be a step up from the profanity and rusty chainsaws…

            4. And feeling giddy about you spinning out of control into a apoplectic rant of rage, here is an answer to “Was the AIA “clearly limited” to that intent and that intent alone?” :

              Yes. If you understood how to read law and legislative history, you would note that the captured intent for a piece of legislation indicates that made-up baloney after the fact that has nothing to do with the stated intent is to be recognized – incontrovertibly – as having nothing to do with the legislation.

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