PTO puts out for notice & comment rules requiring identification of “attributable owner” of applications

Ethics

The notice and request for comment is here.  Among other things, the need for disclosure will foster identification of conflicts by PTO personnel and reducing abusive litigation…

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

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10 thoughts on “PTO puts out for notice & comment rules requiring identification of “attributable owner” of applications”

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    I simply have to note that the original recording statute required recording of assignments within three months. The Supreme Court with Justice Story writing for the court, interpreted the “requirement” as a time limit for filing to cut off the BFP’s. Congress actually amended the statute to read that way.

    Regardless, the proposed rules ask for information that the patent office has no right to nor needs for any reason. A violation of the rule would not lead to invalidity of the patent nor would it likely lead to any holding of unenforceability. Thus one could completely ignore the rule with impunity.

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          LB, you might be right. I have a head cold and am very tired.

          However, the PTO seems to be taking the law into its hands one more time.

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            Yeah, curbing abusive litigation seems to be somewhat out of their charter. I’m not sure I understand what “conflicts” they need to identify – perhaps I should read the request.

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              I cannot ell if the comment “ curbing abusive litigation seems to be somewhat out of their charter was made in earnest or not.

              If there is a litigation abuse problem, the problem should be solved for all litigation.

              If there is a corporate structure problem, the problem should be solved for all corporate structures. Patents are not the only item that corporations use when they compete, and if ‘fair competition’ will be a rallying cry to attach property rights, then should not all such competitive business assets be treated equally and made equally clear?

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      Ned I’m not sure about your “Thus”. In Europe a failure to record changes of ownership on the PTO Register does not result in an invalid patent, or one that is unenforeceable. But there is nevertheless a downside to choosing not to record that will very likely disadvantage any owner who subsequently embarks on action to assert that patent. To mention just one such snag: recovering damages for infringing acts committed before title was recorded.

      So my question: do the courts have a role to play here? Have they got enough equitable discretion to punish those who choose not to register their ownership at the PTO? What will attorneys advise their clients: no reason to record ownership, no downside?

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        I am puzzled by MaxDrei’s comment of “What will attorneys advise their clients: no reason to record ownership, no downside?”

        No reason? I know of no attorney that would even think to make such a bright-line comment. Not only would such a bright-line comment be unwise and just not smart, but it indicates to me that MaxDrei does not realize the attorney-client relationship and that clients make decisions and that attorneys provide balanced input for those decisions.

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