The Who Owns What Problem in Patent Law
7 Pages Posted: 31 Jan 2012 Last revised: 2 Jan 2015
Date Written: January 30, 2012
Under the current rules of patent recordation, it is impossible to be sure who owns a particular patent, or what patents a particular entity owns. This “who owns what” problem frustrates risk management and decision-making about patents, creates arbitrage and hold up opportunities, and forms a major component of patent notice failure. However, it is attributable to a wide variety of practices, undertaken for both strategic and innocent reasons: 1) failure to record ownership, 2) failure to record ownership in a timely manner, 3) assignment to shell or subsidiary companies that the PTO does not affiliate with the real party in interest, and 4) inconsistent self-identification. Cost, poor-record keeping, tax regulations, and the complexities of corporate ownership, as well as more opportunistic motives, explain why these practices are prevalent. This comment, a version of which was submitted in response to the PTO's 2012 request for input regarding proposed recordation rule changes, and reporting on empirical research done on patent recordation behaviors, discusses how and whether patent recordation rules should be changed in light of the desire for enhanced notice.
It makes the point that rather than requiring additional disclosure from applicants, the PTO could do much with the information it already has to support business decision-making. For example, the PTO should consider making it possible to search among only non-expired patents. It could also allow searching by the owner of a record of a patent, that is, its current assignee, rather than its initial assignee, and also potentially by maintenance fee payee. Other important data about patents it could track and make publicly available/searchable include how many times the patent has been cited, how much longer it may be in force, whether it has been reexamined, who requested the reexamination, or whether or not the current owner is a large or small entity. Making this information, which already exists, more accessible and supportive of business decision-making, could go a long way to enhancing the public’s ability to assess patent risks and opportunities.
Keywords: patents, notice, recordation
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