What USPTO should do — make patent assignments viewable

USPTO, in response to pressure from the White House and from big companies that are recipients of cease-and-desist letters, recently published proposed rules with a stated goal of promoting transparency in ownership of patents.  There are many things wrong (blog) with the proposed rules.  But there is a simple thing that the USPTO could do to promote transparency in ownership of patents that would not require rulemaking at all — make patent assignments viewable.

The recent proposed USPTO rules would impose upon all patent applicants a set of very burdensome reporting requirements and related validity risks.  Each applicant would for example have to develop a list of “attributable owners” (individual shareholders of corporate parents, individual partners in partnerships, identities of certain licensees, etc.) and disclose it to the USPTO upon filing of the patent application, and would have to provide updates to the USPTO every few months during the pendency of a patent application.  The mechanism for enforcement would be that at litigation time, a patent would be held invalid because it would be deemed to have gone abandoned years earlier due to some lapse or omission in the applicant’s “attributable owners list” reports filed with the USPTO during pendency of the patent application.  In my comments to the USPTO I expressed the hope that the proposed rules will be scrapped.

Meanwhile, however, there is a simple thing that the USPTO could do to promote transparency in ownership of patents that would not impose large burdens upon patent applicants (like the proposed rules would do) and would not require rulemaking at all.  The USPTO could make patent assignments viewable.

First a bit of background.  If you want to know who owns a US patent or who owns a US trademark registration, for over a decade the way that you would start is by doing a search in the “Assignments on the Web” system.  In this system you would plug in a search term and receive one or more search results.  The search term might be the property number itself (the patent number or trademark registration number).  Or it might be an assignee name or an assignor name.  The search results would be one or more “reel and frame numbers”, each of which indicated the microfilm location of images of the pages of the recorded document.  To get to the bottom of things, for each “reel and frame number” you would then have to send money to the USPTO ($25 per document) and wait for the USPTO to mail you a copy of the recorded document.  The $25 fee was tied to the employee time required to go find the correct microfilm reel and load it into a viewer/printer, and to scroll to the correct frame number, click the “print” button on the printer, and to stuff the printed pages into an envelope to be mailed to you.

After a wait of a couple of weeks, the envelope would arrive from the USPTO and you would review the copies of the recorded documents.  A document might list other related properties in which case you might find the need to do more searching and might then need to send more money to the USPTO and wait more weeks for more things to show up in the mail from the USPTO.  Review of a particular document might reveal that it was not actually an assignment at all but was conditioned on later events or was a page from a company employee policy handbook.

In the old days such delays and expense were understandable, given that the information really was trapped on physical reels of microfilm.  It was understandable that the task of getting to the bottom of who owned which patents or trademark registrations was cumbersome and took weeks or months.

But those were the old days.  For over a decade, USPTO has recorded assignments not on physical microfilm but in computer systems.  Instead of snapping a photograph of the document using a microfilm camera, USPTO runs the document through an imaging scanner, just like you or I would do, and stores it in a computer.  (USPTO gives a nod to the old world of microfilm by giving a fictional “reel and frame number” to the location in the computer of each stored scanned image.)  What’s more, USPTO has (wisely) scanned its backfile of microfilm reels (back to 1955) into this same computer system.  So nowadays if a USPTO employee needs to see some assignment document, there is no need to manipulate physical reels of microfilm any more — it can all be done with a few mouse clicks from the employee’s desk.

If the ownership that you are researching is that of a trademark registration, USPTO nowadays lets any member of the general public view the actual recorded document directly.  There is no need to pay $25 and wait a couple of weeks to receive a copy of a recorded document.  Here is an example:

totwYou can simply click on the link (try it here) to receive a PDF of the recorded trademark assignment.

The trademark people at the USPTO are to be commended for making recorded trademark assignments easily viewable in this way.  It’s been this way for more than a year now.  No $25 fee, no waiting a couple of weeks.

Unaccountably, however, the patent people at the USPTO have not followed suit.  To this day, if you want to view a recorded patent assignment, you have to pay the $25 fee and you have to wait a couple of weeks, just as it was in the old days of physical reels of microfilm.

Which gets us back to the main point of this blog post.  If USPTO wants to respond to pressure from the White House and elsewhere to promote transparency in patent ownership, why not respond by providing a “view recorded assignment” link for patent assignments as it already does for trademark assignments?

I know part of the answer to this question.  All trademark assignments are by law a matter of public record, so there is no legal problem with making it easy for a member of the public to simply click and view the assignment.  In contrast, a fraction of patent assignments (those directed to patent applications that have not been published or issued) are by law kept secret within the USPTO until such time as the property involved is published or patented.  This means that USPTO can’t simply let a member of the public see any randomly selected reel and frame number.  It’s a matter of writing the computer program so that it gets the right answer as to which patent assignments can be viewed and which cannot.

But this computer program has already been written and it already gets the right answer.  The present-day “Assignments on the Web” system for patent assignments already figures out which reel-and-frame-numbers it should tell you about and which ones it shouldn’t tell you about (based on whether the property has been published or issued).  So it really is just a matter of adding a “view recorded assignment” link on a web page that already exists.  Adding this link to the web page would be one way for the USPTO to respond to the White House and to the members of the public who have been clamoring for greater transparency of patent ownership.

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