One aspect of the America Invents Act of 2011 was to allow patent owners to directly file patent applications as the named “applicant.” Under the prior rule, only inventors could be applicants except in unusual circumstances where the inventor was proven to be unavailable or unwilling to cooperate with the rights-holder. This change simplifies the process for corporate patent owners — especially in dealing with continuation applications and former employees. The chart above shows information gleaned from recently published patent applications and shows that most assignees are now naming themselves as the applicant rather than the inventors.
“This change simplifies the process for corporate patent owners — especially in dealing with continuation applications and former employees. ”
Anyone have a quick explanation of how the process is simplified vis-a-vis the old process?
Internally, they have finally started assigning “EPO style” family numbers in anticipation (I think) of switching to an initial disclosure document based family. Not sure which of the 987 family definitions they will be using, but they need to do something to merge the EPO database with their own database. Currently, they have zero de-duping. This is of course a different topic for a different day…
Oops. That was meant as 2.1.1 or something like that.
Can someone please explain all the main benefits of assignee filing vs. the old way?
1. It’s easier to address a non-cooperating inventor.
2. It’s possible to cut the inventors out of access to the file (you can no longer use a 3.73 form, so you can’t do it if you are not named the applicant)
3. It’s necessary to file a Terminal Disclaimer.
4. If you happen to be in the situation where you have to file new powers of attorney, if the assignee is not the applicant, the inventors must sign the new power for each individual case, because unlike assignee they cannot file a global Power of Attorney.
I can’t see any benefit at all. If you file an application for a corporation, you still have to get the inventors to sign a declaration and a recordable assignment (which they should be obliged to do under their employee invention assignment agreement) and then get power of attorney from the corporation, then file all that. This steps are required whether you name the inventors as applicants and the corporation as an assignee, or name the corporation as applicant.
Patent attorneys who think it relieves them of the need to get inventors to sign power of attorney have been doing it wrong all along. If the invention belongs to the corporate employer, the inventor no authority to grant power of attorney, and patent attorneys who get POA’s from inventors are muddying the waters as to who they represent.
Non-cooperating inventors are addressed in rules that have nothing to do with assignee as applicant.
So what is left? Is there any detriment to filing in the name of the inventors, along with assignments and a POA from the corporate assignee?
Forgive a cynical suggestion, but I wonder how many of the 40% still being filed in the name of the inventors are simply due to practitioners not yet changing their old habits to embrace the new and better system provided by the AIA? In particular the bad old system of filing a power of attorney from inventors who did not even own the invention and were not even being represented by that attorney [the attorney was representing the assignee]. The percentage of patent applications filed by inventors who had NOT previously assigned their patent rights to an employer is far less than 40%. I would hazard a guess that it is not even half of that, or less than 20%? [I think Dennis had evaluated that particular statistic some time ago? And not all assignments are recorded even by the patent issue date for some patents. ]
It is not that cynical paul.
See the posts at 3.2.1, 3.2.1.1.1, and 3.3.1.
One reason for some cynicism on new PTO practice change subjects like this is because the P bar has no MCLE requirements to enforce keeping up with PTO practice changes, even those caused by new patent legislation. E.g., several years ago a senior PTO official told me that when the rule requirements for Board appeal briefs changed, that for several months thereafter something like 40% of the appeal briefs the PTO received were rejected for non-compliance with the new rule requirements – those attorneys and agents were all still using their old forms. Apparently the form of CLE they preferred was being informed from rejections of their clients briefs rather than keeping up with PTO rule changes.
Well done, Prof Crough, immediately deleting all that OT political stuff. Bravo.
While Applicants can file an application, our “first inventor to file” system still requires listing all inventors in an ADS and a declaration of inventorship by each inventor prior to grant. The new AIA exceptions to prior art and derivation proceedings suggest early identification of inventorship is needed to differentiate prior art of another from that of one who obtained or derived the invention from an inventor. These requirements make it unlikely that US applicants will rush into assignee filing. Just as before the AIA, it may be prudent to document individual contributions before filing an application, determine inventorship of the claims as filed, and continue to monitor changes as claims are altered and eventually granted, and filing the Declarations that fit the inventorship of the final claims.
good points dkette
Except that ROW filers have to be careful too, to fix, before doing any filing, exactly what subject matter was invented by which individual. And yet still they invariably file in the name of the owner rather than the inventor.
I suppose when one has always had the freedom to register property in the name of its true owner, it just seems silly deliberately to register it in the name of somebody who is not the owner.
“I suppose when one has always had the freedom to register property in the name of its true owner, it just seems silly deliberately to register it in the name of somebody who is not the owner.”
?
Even before the changes of the AIA, one could with proper steps, register property in the name of its true owner.
Not sure what point you are trying to make MaxDrei.
I’m not convinced by dk’s reasoning and seeking to explain to myself why so many go on filing at the USPTO in the name of an entity other than the owner of the property.
Imagine yourself as the owner of some piece of property. Would you go and register it in somebody else’s name. Why? It just seems to me to be taking an unnecessary risk, with my own property. How about cases where the inventor mistakenly supposes himself to be the rightful owner. Might not he, as registered Applicant, simply sell it and pocket the proceeds?
Different options and different protocols that exist to duly register the property.
I fail to see the sense of alarm that I pick up from your posts.
The sky remains in place.
I’m not following you, dkette. As you suggest, the ADS requires that all of the inventors be listed, whether or not the filing is in the name of the assignee. I agree that it remains “prudent” to document inventorship, but how does intentionally refraining from identifying the assignee as an assignee-applicant further that prudence?
It seems to me that (as Max implies) that it is imprudent to file with inventors as applicants when there is already an assignment or obligation to assign. The applicants have certain powers to act in the application, at least until the assignments are recorded and powers-of-attorney established – I don’t necessarily want them to have those powers.
Prudence and urgency only arise on a case by case basis DanH.
The old options may be more than fine and prudent enough not to warrant a change in protocol.
This is at most a molehile. Do not attempt to make it into a mountain.
I’m just glad that the commercial database providers were able to make this new (for US art) field immediately searchable. The raw US data was not searchable by Applicant or even by plain ol’ text during those first few months of publications. It was kind of embarrassing when you could not find a reference to Company X when it clearly showed Company X on the face of the PG-Pub.
D – This is still coming from the raw USPTO data (XML files). In those files, they still do not have the “Family” information provided on the USPTO website.
What a tribute to entrepreneurial activity within the USA: the ongoing steady 40% of filings which are by the inventor in person ie NOT in the name of an assignee. I find that truly striking. Will it ever change, I wonder.
My hunch is that nowhere else in the world does the corresponding figure climb above 10%.
Anybody know?
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