On November 23, 2011, the U.S. Patent and Trademark Office published a proposed rule with new requirements and incentives for the prompt recording of patent assignments. Under current laws and regulations, owners who fail to record patent assignments within three months of filing risk losing their rights to a subsequent purchaser. (35 U.S.C. 261). In addition, only the owner of record (or, in some situations, its exclusive licensee) can file suit to enforce the patent. However, there is no absolute requirement that assignments be recorded.
The USPTO’s new rule is intended to address deficiencies in this system. According to the new rule:
Intangible assets now comprise over 50% of the outputs of U.S. industry, and intellectual property rights (IPRs) provide a platform for intangibles to be transacted so that they can provide profits for innovators and move technologies to their most efficient uses in the economy. IPRs are often cleared by their manufacturers or distributors in order for new products to be legally sold. In such cases, IPR clearance is often made more difficult and time-consuming, legally risky, and expensive because current assignment information on patents and applications is not available. An incomplete assignment record thus presents a significant barrier to market efficiency.
Under the new rule, assignments must be disclosed:
- at the time of patent application filing;
- if assignment changes before publication of the application;
- when the issue fee is paid; and
- any time an assignment causes the patent to gain or lose entitlement to small entity status.
The proposal states that the USPTO may offer incentives such as discounted maintenance fees for timely filing of assignment documents.
The USPTO will accept comments on the proposed rule through January 23, 2012.