Meetings on the Notice of Public Rulemaking (NPRM) “Changes to Require Identification of Attributable Owner”
These meetings have concluded. The information on this page is provided for archival purposes.
The United States Patent and Trademark Office (USPTO) is pleased to announce two public meetings on “Changes to Require Identification of Attributable Owner,” 79 FR 4105, (“Attributable Owner NPRM”) published on January 24, 2014:
- March 13, 2014, at the USPTO campus in Alexandria, Virginia, from 1 p.m. Eastern Daylight Time (ET) until 4 p.m. (ET).
- March 26, 2014, at U.C. Hastings College of the Law, San Francisco, California from 9 a.m. Pacific Daylight Time (PT) until noon (PT).
The Attributable Owner NPRM proposes changes to the rules of practice to require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent. The Office is conducting two public hearings to discuss these proposed changes as an additional way for the Office to introduce the proposed changes and directly receive feedback from the public. Members of the public are invited to attend in person or remotely via WebEx. Requests to present oral testimony must be submitted to the USPTO.
- Alexandria, VA Meeting:
The first public hearing took place on
March 13, 2014,
from 1 p.m. (ET) until 4 p.m. (ET),
at the USPTO Madison Auditorium North,
Concourse Level, Madison Building,
600 Dulany Street,
Alexandria, VA 22314.
- San Francisco, CA Meeting:
The second public hearing took place on
March 26, 2014,
from 9 a.m. (PT) until noon (PT),
at U.C. Hastings College of the Law,
Louis B. Mayer Lounge,
198 McAllister Street,
San Francisco, CA 94102.
Agendas and Remote Participation Instructions
Requests to Present Oral Testimony
Those wishing to provide oral testimony at either public hearing must submit a request to do so in writing no later than March 12, 2014.
Requests to provide oral testimony at either public hearing must be sent by email to email@example.com and must indicate the following information:
- the name of the person desiring to speak;
- the person’s contact information (telephone number and electronic mail address);
- the organization(s) the person represents, if any; and
- the hearing location where the person prefers to speak.
A person must be physically present at the hearing location to provide oral testimony; virtual testimony via telephone or webcast is not available. Based on the requests received, an agenda of scheduled speakers will be sent to those speaking and posted at this link. The number of speakers and time allotted to each speaker may be limited to ensure that all persons speaking will have a meaningful chance to do so.
Members of the public who wish to attend solely to observe need not submit a request to attend.
The meeting will begin with USPTO presentations on the Attributable Owner NPRM, and then members of the public who requested to present testimony will be invited to speak.
The Office welcomes comments on all aspects of the proposed rulemaking, but highlights the following areas (which are also highlighted in the notice of proposed rulemaking) for receipt of public input:
- The proposal sets forth a definition for attributable owner. The Office invites public comment on whether changes could be made to the scope of the information proposed to be collected while still achieving the objectives of the Office as set forth in the proposal.
- Part of the current proposed definition of attributable owner incorporates by reference the definition of ultimate parent entity set forth in 16 CFR 801.1(a)(3). The Office welcomes comments on how this definition might be modified for use at the Office. The Office recognizes that corporations sometimes transfer patents and patent applications within the corporation for legitimate reasons, such as tax savings purposes, and also welcomes comments on the impact of the proposed changes on this practice.
- The proposal sets forth when attributable owner information must be supplied to the Office. The Office invites public comments as to whether and when attributable owner information should be collected. For example, are there additional times during prosecution (e.g., with each reply to an Office action) when the applicant should be required to update or verify attributable owner information? Is requiring updates on changes during prosecution within three months of any change in attributable owner the appropriate time frame (i.e., should the time frame be more or less than three months?).
- The Office plans to work with its user community to implement the attributable owner information reporting system in a user-friendly manner and welcomes input on how this can best be accomplished. Subject to financial and resource constraints, for example, the Office would like to explore means to allow for the bulk processing of changes to attributable owner for portfolios of applications and patents. The Office also welcomes input on how the updating or verifying by the applicant or owner should be structured in conjunction with the payment of maintenance fees, particularly in light of the practice of outsourcing payment of maintenance fees to third parties.
- The Office further seeks comments on whether the Office should expand the current Official Gazette practice of allowing patent owners to list patents as available for license or sale to permit all patent applicants and owners to voluntarily report additional licensing information for the Office to make available to the public in an accessible online format. The Office welcomes input on what such licensing information should include (i.e., willingness to license, as well as licensing contacts, license offer terms, commitments to license the patent, e.g., on royalty-free or reasonable and non-discriminatory terms) and the interface of the online system.