USPTO Considering Changes to Patent Assignment Process

The U.S. Patent and Trademark Office (USPTO) has announced that it is looking to revamp the patent assignment process. According to the USPTO, the changes are designed to facilitate the collection of more timely and accurate patent assignment information both during prosecution and after issuance.

As noted by the USPTO, a more complete patent assignment record would produce a number of benefits, such as:

• The public would have a more comprehensive understanding of what patent rights being issued by the United States are being held and maintained by various entities.
• The financial markets would have more complete information about the valuable assets being generated and held by companies.
• Patenting inventors and manufacturers would better understand the competitive environment in which they are operating, allowing them to better allocate their own research and development resources, and more efficiently obtain licenses and accurately value patent portfolios and patent estates that they may seek to acquire.

To elicit more comprehensive patent assignment data, the USPTO is considering changes to require that any change in the identity of the assignee or assignees (i.e., real party in interest) be made known to the Office within each communication to the Office by the representative of the applicant during patent prosecution.

Specifically, the proposed new rules would:

• Require that any assignee or assignees be disclosed at the time of application filing;
• Require that the application issue in the name of the assignee or assignees as of the date of payment of the issue fee;
• Require the identification of assignment changes after filing date for inclusion on the patent application publication;
• Require timely identification of any new ownership rights that cause the application or issued patent to gain or lose entitlement to small entity status; and
• Provide discounted maintenance fees in return for verification or update of assignee information either when a maintenance fee is paid or within a limited time period from the date of maintenance fee payment.

For those wising to weigh in on the proposed changes, the USPTO is accepting comments on the proposed rules until January 23, 2012.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide a powerful defense of your unique ideas.