Attributable Ownership Update

March 2015

In early 2014, the USPTO proposed new rules to require the disclosure of certain information relating to ownership of patents and patent applications.  The foundation for the proposal was a series of Executive Actions issued by the White House in June 2013 concerning various high-tech patent issues purportedly designed to protect innovators from frivolous litigation and ensure high-quality patents.  The proposed rules would have required not only regular updating of the named assignees of patents and patent applications, but also identification of their “attributable owners” – a group that would potentially include enforcement entities, ultimate parent entities, and hidden beneficial owners.  Failure to comply may have resulted in the loss of rights.

After a period of public comment during which various concerns regarding the proposals were voiced, USPTO Deputy Director Michelle Lee announced last October that the Office had decided not to pursue the proposed changes for the time being.  Instead, it was suggested that Congress may address ownership identification in forthcoming legislation.

Thus, applicants and patentees are not presently required to publicly record assignment or other ownership information per the status quo.  The stalled proposal, however, points to the possibility of future change, perhaps as part of a larger patent reform bill, and also serves as a prompt to evaluate recordation preferences.  Recordation generally provides public notice which may assist in patent enforcement and may prevent others from asserting a contrary ownership claim.  The USPTO has removed the fee associated with recording assignments in an attempt to encourage the practice.