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.
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.
Your point, if any, is unclear.
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.
““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.
“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.
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.
Well we’ll see who it sux to be now that “the fix is in” and “it was an inside job”. Won’t we?
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.
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. 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.
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.
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.
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.
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.
“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.
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?
I surely object to any illegal grabs of power. See Tafas
There is clearly a correct way of getting to the ends.
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.
“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.
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?
6: “Surely you must concede that the situation is arguable ”
??? Pull your head out of the sand and try reading some of the comments 6.
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.
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.
“??? 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.
“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.
“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?
“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?
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.
“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?
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.
Ned,
Tell me again the quote from Benson.
You know the one, ending in “we do not so hold.
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.
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.
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?
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.
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?
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.
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.
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?
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.
link to assignments.uspto.gov
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.
Another benefit of this rule change may very well be a better and more accessible assignment database. I welcome both changes.
You welcome anything in your door that is not supported by the law and is not good for patents.
They do not need a rule change to open up the assignment database. The USPTO managed to do it for trademarks.
I understand that MJM.
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.
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!
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.
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.
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.
“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.
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?
“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.
You quite missed the point (again) 6.
Who better to interpret what the law means than the man who actually helped write the law?
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.
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.
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.
“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”.
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
“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!
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.)
“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.
Not just them, but you too 6. You are a Palin boy.
Is that a cute little NWPAism you’ve made up?
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.
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.
“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?
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.
I have to make up something to keep you wayward children at bay.
“I have to make up something to keep you wayward children at bay.”
Aight gramps.