by Susan G. L. Glovsky of Hamilton Brooks Smith Reynolds
Patents are far more valuable than they ever have been. Yet, unlike real property, it can be difficult to determine patent ownership or accurately identify encumbrances even though patent value can exceed the value of a home or even an office building. Rights in real property are determined by legislation in each state, which provides for recordation of written transfers and security interests in real property. Legislation related to real property recordation provides a level of certainty in determining the true owner, provides protection for bona fide purchasers, and permits recordation of liens to satisfy debts owed by real estate owners.
This is not the case with patents. Because of an inadequate system for recordation, prospective purchasers, licensees, lenders, and even defendants in a lawsuit may have to take it on faith that the seller, licensor, borrower, or plaintiff truly owns, and has not previously encumbered, these patent rights.
Unless assigned, patent applications are owned by the inventor or inventors named in the application. The inventor(s) can assign ownership to another person or to a company. Thereafter, the assignee can further assign the application or, once issued, the patent. Any assignment must be in writing, and the assignment can be recorded with the United States Patent and Trademark Office. Recordation is voluntary. In the event of conflicting transfers of title to the same patent or application, the Patent Act gives the first purchaser a three month window in which to record, which takes priority over a subsequent purchase during the three month period, even though there was no constructive (through recordation) or actual notice of the assignment at the time the subsequent purchase was made. As a result, potential transfers that might have occurred in the three month period preceding an assignment that could trump that assignment may be unavailable when conducting any title search, leaving a potential purchaser with uncertainty and unacceptable risk.
Security interests in patents are to be recorded where UCC filings are made, based on state law. Unlike real estate, it is not always easy to determine the state in which a security interest in a patent has to be recorded. Once the state is determined, it is necessary to determine, under that state's law, whether recordation is made at the state or local level in order to search for any security interest that may be recorded. Lack of certainty concerning security interests can discourage lenders from providing needed loans.
The time has come to enact national legislation that provides clear record title to patent applications and patents. The value of patents is too great to continue with the present system. Moreover, patents are a federal right and should be addressed at a federal level. A national system would harmonize U.S. law with those of other countries, which generally have a national system for recordation of patent rights. Recently, the Patent Office proposed rules that would require disclosure of any assignee of patent rights. But these rules simply do not go far enough. Legislation is necessary in order to provide a comprehensive internationally recognized system that assures the recordation of patent title, security interests, and other encumbrances through filings solely in the Patent Office.
Taking the best from state systems for recording interests in real estate, at a minimum any legislation needs to:
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Provide for recordation in the United States Patent and Trademark Office of transfers, security interests, exclusive licenses, corporate mergers, and liens that relate to rights in patent applications and patents as the sole location for recording those interests
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Provide that a transfer is only effective against a bona fide purchaser once it is recorded
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Determine priority among holders of transfers and security interests that are not recorded, including whether notice of unrecorded transfers is considered in determining priority
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Provide a mechanism in Federal Court to remove a cloud on title to patent assets
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Provide a mechanism (such as a lis pendens) that prevents transfer of the patent asset while a court action to determine rights in the patent asset is pending
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Allow for dismissal of any lawsuit filed to enforce a patent, unless the record owner or record exclusive licensee is a party
The new rules proposed by the Patent Office have succeeded in focusing attention on recordation of patent rights, but the proposed rules do not go far enough. In order to provide a comprehensive system that addresses all the issues, Congress needs to enact legislation that solves all the problems in the current system.
Notes:
Substitute “idea” for “natural law” and the analogy to Frischmann’s analysis becomes clear. Indeed, there is no reason why a “natural law” cannot be an “idea” as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not “add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply” those correlations (slip op. 8). The “administering” and “determining” steps, in the Court’s view, comprised “well-understood, routine, conventional activity already engaged in by the scientific community” and so were “not sufficient to transform unpatentable natural correlations into patentable application of those regularities” (slip op. 11). Or, in Frischmann’s terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.
While this kind of legislation may arguably be a good idea, it’s difficult to imagine Congress taking up patent reform again in the near future. The length of our wait for the AIA was instructive. Any further patent legislation is likely to take years.
It is clear that the right to privacy applies to this type of property.
It is clear for whom the benefit would be for. And that would not be the public.
besdies Anon.
…and Malcolm,
…and Ned,
…and IANAE,
…and MaxDrei (and especially MaxDrei)
…and any other regular poster?
After all, these are the Shilling Fields.
Who likes to beat a dead horse?
Uh, you?
IANAE’s slip is not surprising in content, although he is usually a bit more discreet.
The lack of any follow on comments is not a bit surprising because of who made the comment – IANAE is a known anti-patent advocate.
Who likes to beat a dead horse?
IANAE’s infringer bias is still invisible.
Maybe “astonished” can tell me what type of legal writing IANAE is up to.
That is, if he has found his way out of the forest yet.
Just as invisible as the comments to IANAE’s “oops,” but much much cooler:
link to autos.yahoo.com
Curious that the army of regular posters has not picked up on this legal faux pas of IANAE’s.
Tell me, IANAE, why do you equate public with prospective infringer?
I would take the best parts and leave the scraps to the meek. They can deal with the raped and polluted lands.
If you had the whole world, what would you do with it, where would you put it?
If a Little Guy owns it, Big Corp can go ahead and infringe (the i4i’s are the exception).
If a Evil Troll owns it, Big Corp may need to pay attention (Patent Nuclear Blackmail won’t work).
The need to know is so that the calculations of “efficient infringement” can be properly done. See link to ipwatchdog.com
D_amm the Trolls and their ability to bust the patent thicket that us Big Corp has so carefully (and expensively) woven.
D_amm innovation that keeps moving forward and prevents us from truly owning the marketplace like we so deserve.
That’s a hoot.
No sweat looking glass, it’s just a comment from Ned. All due weight given to it.
Looking, thanks for the advice.
“I’m sorry, but I am replying to e-mail and not the thread. That could be the problem.”
W
T
F
Again? That’s rather rude of you. If you cannot address the points actually under discussion by your email method, then you should stop using your email method.
I'm sorry, but I am replying to e-mail and not the thread. That could be the problem.
“Missed what?”
cf
“We have registration solely to force applicants to file copies of the work with the Library of Congress.”
W
T
F
Ned, why are you talking about patents at risk in a copyright discussion?
Missed what? Your patent is not at risk. Your surrender is voluntary and discretionary. If you do not surrender it, the claims, even if finally rejected after an appeal to the Supreme Court, remain in force in the original patent and can be enforced. If the problem was BRI, that does not apply in court.
There actually is a Supreme Court case on point.
As a practical matter, we all know what will happen. Immediately after you abandon the finally rejected reissue, the Commissioner will order a reexamination. But that is a different procedure. And, the threat of reexamination exists independent of your decision to file a reissue. Your decision to file a broadening reissue was not the problem if the prior art was there all along. You really needed a narrowing reissue.
All this time, the patent still is in force and can be enforced.
It looks like I am not the only one, Ned.
At least I was half-right. You completely missed.
Thanks Helpful, I see I was off on the regardless of publication and that I was correct on the regardless of registration.
Basics, you really need to study the history of copyright registration in the US.
“I’m surprised nobody has mentioned yet that, since eBay, the identity of his future plaintiff can make a very big difference to a prospective infringer.
So, yes, the name of the actual owner (and probably the exclusive licensee) really is information the public needs.‘ (emphasis added)
Why?
The “public” does not need this.
Would-be infringers want this.
That was a bit of a freudian slip IANANE.
The US should not be a party to making the life of would be infringers easy. The US does enough to share the “whats.” The “whos” are NOYB.
I’m surprised nobody has mentioned yet that, since eBay, the identity of his future plaintiff can make a very big difference to a prospective infringer.
So, yes, the name of the actual owner (and probably the exclusive licensee) really is information the public needs.
IANAE is noticably absent on this and BigGuy does not call him out.
If it helps any, I was about to make the exact same point BigGuy made at 5:15 PM, until I saw that it had already been said.
Basics,
The Serra post was on the Copyright: Sue the Lawyers thread.
In pertinent part: “Even when works are not registered, Section 407 of the Copyright Act requires deposit of two copies of the best edition of a copyrighted work within three months of publication for the Library of Congress.”
The unenforcement comment: “Easily the most neglected IP law. Probably one of the most neglected laws of any type, quite possibly passing up speeding and jay-walking.”
And after they get me to sign all those empty Documents, so they control the BOX… I get this letter dated March 4, 1997. I have no idea who your Atty. is. BLAH BLAH BLAH
“are much more clever than mine.”
There BigGuy goes again, setting his sights way down low.
“what would I be calling him out for”
Maybe the same thing you b_tched about here: lack of consistency.
I’m sorrry, what would I be calling him out for?
If you’re suggesting that I am IANAE, I’m flattered. But IANAE’s comments are much more clever than mine.
And to all you Thomas’s that told me to let it go… I don’t let things go very easily. Especially when they take 60 years to get here. And in an instant hoooohaaaa hoooohaaaa hoooohaaaa . Excuse my childish rant I learned that from a Monkey and some Lawyers.
“We have registration solely to force applicants to file copies of the work with the Library of Congress.”
Actually no.
See the post by Serra above. Copies must be filed regardless of registration or even publication.
Also see the post below that one. A rule largely unenforced.
Makes sense.
Except the Troll IANAE is noticably absent on this and BigGuy does not call him out.
Hmmmmmm
Smitty, the ROW does not require registration to enforce copyright. We have registration solely to force applicants to file copies of the work with the Library of Congress.
Who said copyright law had it correct? Ever heard of the problem of orphan works?
So what? So they are different. Why does that matter?
Because the real property analogy isn’t helpful to the sockies for this particular argument. But start a discussion about injunctions or compulsory licenses or limitations on damages and see how quickly the tr0lls start screaming about how patents are EXACTLY like real property.
Everywhere your little sockpuppets are. I know who you are. You are that MM person everyone despises.
Now that’s funny. Almost paranoid, even.
“So they are different. Why does that matter?”
Enjoy the slide on your way to finding out.
Except for one. Patents are not real property.
Dxmm, that always comes up.
So what? So they are different. Why does that matter?
“Am I? Can you show me where this b_tching can be found?”
Everywhere your little sockpuppets are. I know who you are. You are that MM person everyone despises.
Don’t worry, you will be registered.
That’s a great idea.
Register everything.
“Every rationale for why real estate transactions are recorded at a state record office apply similarly to patents.”
Except for one. Patents are not real property.
Dxmm, that always comes up.
Cloudy, good point. Next we will require registration of PUR in order that they be enforced.
LOL
It is my GDB if my client is trying to license a patent from someone who claims to be the owner but has not recorded his interest in the patent. It is my GDB if my client is trying to purchase title to a patent portfolio free and clear of all encumbrances.
Every rationale for why real estate transactions are recorded at a state record office apply similarly to patents.
Not the only thing going wrong for copyright…
Interesting.
In copyright, we move away from registration as a requirement to protect, and move in the patent realm in the opposite direction?
Unreal.
What about another bizzare idea? Why should a patent application identify inventors at all if
1) one has to prove standing anyway; and
2) naming someone who is not an inventor does not affect validity?
“You did, or rather, one of your sock puppets did. ”
Did I? Can you show me where this can be found? Maybe it was one of your sock puppets.
Don’t worry, when you register everything with the government, you will register all of your sock puppets too. You must be overjoyed with the idea of registering everything. (We haven’t quite figured out how to register your emotions, although with the biometric technology, we are getting very very close).
And I’m telling you that the rationale for FORCED public recordation of patent ownership is in every way excessive and NOYGDB.
If the PO wants to let it be known he owns something, the optional paths are there. If he wants to enforce the patent, that is, bring you to court, then he must tell you who he is. Everything else is NOYGDB. Making things easy for you is an intellectually dishonest rationale.
There is nothing intellectually dishonest about NOT telling you everything I own, or even which patents I own. What is intellectually dishonest is pretending that your convenience is somehow NOT on the slippery slope.
If you had nothing to hide, then you wouldn’t be afraid of the slippery slope. You must have something to hide. Maybe it’s that intellectual dishonesty.
Word. Who brought the comparison up to begin with?
Oh wait…
You did, or rather, one of your sock puppets did. Everyone else compared owning a car to owning a patent. Two different comparisons.
Here, here to Ms. Glovsky for her accurate diagnosis of the problem. Less enthusastic am I about her prescriptions, which run counter to centuries of property law!
Why not keep it simple, and simply require that everything be recorded within three-months of execution for it to be enforceable against non-parties?
Why don’t you answer my question?
Because it’s a fallacious question designed to elicit an emotional response instead of a reasoned one. In other words, it’s a st_pid question.
Slippery slope? So what? You don’t seem to mind stepping on that slope for the sake of your convenience. Are you trying to tell me that the potential to eradicate all crime is not a bit more compelling than your mere convenience and nosing into other people’s business of what they own?
I’m telling you that the rationale for public recordation of patent ownership is in no way similar to any cockamamie rationale for requiring public recordation of personalty ownership, and you trying to draw a correlation between the two is intellectually dishonest.
Why don’t you answer my question?
Slippery slope? So what? You don’t seem to mind stepping on that slope for the sake of your convenience. Are you trying to tell me that the potential to eradicate all crime is not a bit more compelling than your mere convenience and nosing into other people’s business of what they own?
When exactly do you start having second thoughts as you slide down that slope?
“Comparing a license to drive to a right to exclude is a red herring.‘
Word. Who brought the comparison up to begin with?
Oh wait…
And how is that universal registration project coming along? You up for it? After all, it would make law enforcement really easy if the government could record everything you own, everything you do, everything you say. Do you have something to hide? Then you are all for it, right? Well?
Am I? Can you show me where this b_tching can be found?
Ah, the ol’ slippery slope. You know that’s a logical fallacy, right? Instead of delving into fallacious reasoning, why don’t you explain why having transparency for ownership of patents is a bad thing?
Do you have a driver’s license? If you do, then find the book you studied from and READ the book. You do not have a right to drive. The State allows you to.
Do you have a copy of patent law? If you do, then read it. The Govenment says you have a right, (unless…).
Owning a car is far different from being able to drive it. I can own a car without having the proper paperwork to actually drive it. Heck, a legal construct (i.e., a corporation) can own a car, but only a real live person can actually drive a car. Hence, whether a state grants me the privilege to drive a car is immaterial to whether I can own a car.
Ownership of property is considerably different from an ability to use said property, and we’re talking ownership here. Comparing a license to drive to a right to exclude is a red herring.
If you don’t understand the difference between a right and a privilege, which is apparent as you think it without a practical difference, then you won’t understand when that difference is explained to you.
I understand the difference between a right and a privilege. I just think that this difference has no applicability to a discussion over whether the ownership of certain property should be publicly recorded in order to be effective.
Don’t assume the difference is unimportant when it comes to the government. Such just shows a basic lack of understanding of what the government is and what it is for.
Well then why don’t you explain to me why the difference is important in this context? Because I am at a loss.
Focus on that?
Really? Have you nothing better to do?
“The State allows you to.”
“The Govenment says you have a right,”
“If you don’t understand the difference between a right and a privilege,”
Some kind of state/federal distinction?
Interesting juxtaposition of issues and posters who have expressed their views on the two issues.
How do those who call for a more detailed “notice” provision square the fact that we just gutted the notice provision that we did have, which quite arguably (see the linked thread) covered the more important “what” rather than the less important “who”?
“when those rights are in force and, if so, when they will expire if maintained until maximum term”
Hagbard, you are too late. The AIA has eviscerated the notice provision of patent marking because some people ($$$$) did not want to be bothered with the nuisance of using the privilege correctly.
All the nerve, right?
What a bizarre idea, that a member of the public should be able to consult USPTO records in order to determine who it is that can enforce patent rights granted by the USPTO. Imagine that they might also be able to tell, without the benefit of legal advice, when those rights are in force and, if so, when they will expire if maintained until maximum term. The mind boggles, boggles I say.
“You’re trusting them to issue the patent, aren’t you?”
And you are already b_itching about that on a constant basis. How does this advance your argument?
we’ve just contacted the attorney/firm listed on PAIR in these circumstances, and sent an inquiry.
“Really? Owning a car is a privilege, but owning a patent is a right? Really? Care to explain that a little better? Then would you mind telling us why that matters?
Whether a patent is considered a privilege or a right is a distinction without a practical difference in this discussion.”
Why ask questions if you show that you are not going to listen to any answers?
Do you have a driver’s license? If you do, then find the book you studied from and READ the book. You do not have a right to drive. The State allows you to.
Do you have a copy of patent law? If you do, then read it. The Govenment says you have a right, (unless…).
If you don’t understand the difference between a right and a privilege, which is apparent as you think it without a practical difference, then you won’t understand when that difference is explained to you.
Don’t assume the difference is unimportant when it comes to the government. Such just shows a basic lack of understanding of what the government is and what it is for.
Why not have total transparency? Are you willing to have all of your property catalogued and listed in a government registry? What then? All of your actions, who you talk to, what you said? All of that would make it easy to know everything about you. Or do you have something to hide?
This MM poster should be banned.
You’re trusting them to issue the patent, aren’t you?
“Clearly, I am in the camp for less – and less intrusive – government.
”
So then you’d prefer if we took patents away entirely? Wouldn’t want an intrusive government right granted by a government bureacracy, now would we?
sockie: Look especially at the wonderful post by What A Dolt
LOL. Sockie-on-sockie sexy time is teh hot.
The aspects of cars and driving on public roads clearly is not a right but a privilege marking the distinguishment as legitimate.
Really? Owning a car is a privilege, but owning a patent is a right? Really? Care to explain that a little better? Then would you mind telling us why that matters?
Whether a patent is considered a privilege or a right is a distinction without a practical difference in this discussion.
Your strawman interjection of houses is especially disengenuous as you have often stressed the difference between intellectual property and real property.
Really? What is it about intellectual property that makes public recordation of transfers of ownership less important than it is in connection with real property?
Well, place me in the “greater transparency” camp that abhors the secret ownership of government-granted monopolies. It’s very difficult to do a proper IP due diligence when patent ownership data is not publicly available.
Feeley was my first choice in the Models. But I obviously have to go elsewhere.
Don’t worry, MM is registered too.
Sockpuppet whining here regarding registration of patent ownership reminds me a lot of our National Rifle Association yahoos whining about having to register their AK-47s.
Of course, there’s a good reason for that.
link to thepriorart.typepad.com
Register everything.
Trust us.
Just make any target in the shape of Max’s foot. He shoots that dead on quite easily.
1) I agree with the opening post that all security interests in patents should be recorded at the national level.
2) I further agree that the record owner should be a necessary party to a lawsuit, and they normally are.
But this will not completely solve the problem of identifying who the real party in interest is, will it?. Bhere remains the problem of exclusive licensees who may be the real party in interest rather than a nominal record titleholder.
The fact that our patent-fluffing txxbxgger sockpuppeteers despise discussion of this topic so much is just further evidence that we’re on the right track.
“Good luck on this registration thing. The initial filings to set the baseline will grind USPTO to a halt”
Lulz. I don’t doubt it. But we can kind of phase it in.