The Patent and Trademark office recently published proposed rules that would require disclosure of patent ownership information during patent prosecution or Patent Trial and Appeal Board proceedings. These proposed rules are the result of the White House’s initiative on patent reform that would, among other things, end frivolous litigation initiated by non-practicing entities or patent assertion entities, popularly also known as patent trolls. Many patent trolls hold their patents in shell companies whose only assets are the patents themselves — this both obfuscates the sheer amount of litigation they engage in and shelters the actual troll from sanctions for frivolous litigation or from loser-pays fee-shifting rules. The proposed rules will require the disclosure of the “real-party-in-interest”, or as the rules call them (to avoid confusion with other definitions of “real-party-in-interest elsewhere in patent statutes), “attributable owners”, when there is a change in the attributable owner during the pendency of an application, at the time of fee payments, and when a patent is involved in supplemental examination, ex part reexamination, or any trial proceeding; changes in attributable ownership must be disclosed within 21 days. The proposed rules also provide severe punishments for failure to comply with disclosure deadlines; specifically, the failure will result in abandonment of the patent or application. The rules define an attributable owner as an entity that: (1) exclusively or jointly, has been assigned title to the patent or application (“titleholders”); (2) is necessary to be joined in a law suit in order to have standing to enforce the patent (“enforcement entities”); (3) is the ultimate parent entity, or the entity or individual that is not controlled by any other entity or individual, which includes parent companies who have no controlling shareholders and individuals who own controlling stakes in companies (“ultimate parent entities”); or (4) directly or indirectly, creates or uses a trust, proxy, power of attorney, pooling arrangement, or any other contract, arrangement, or device with the purpose or effect of temporarily divesting such entity of attributable ownership or a patent or application, or preventing the vesting of such attributable ownership of a patent or application (“hidden beneficial owner”). The rules are currently in a 60-day public written comment period.
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