Patent Revamp Advocates, Critics Advise PTO on Proposed Patent Ownership Disclosure Rules
Hewlett-Packard mostly supports the U.S. Patent and Trademark Office’s proposed rules for expanding its patent ownership information disclosure requirements, said Scott Pojunas, HP director-patent development, at a PTO hearing Thursday. PTO was collecting public feedback on its proposed rules, which would require patent applicants and owners to expand their disclosure-of-ownership information to include entities PTO considers to have a claim to “attributable ownership” (http://1.usa.gov/1n5qjAq). Previously referred to as “real-party-in-interest” (RPI) by the PTO, entities with attributable ownership would include any patent title holder, the ultimate parent entity behind the title holder and enforcement entities that have a stake in asserting patent ownership rights. PTO replaced RPI with attributable ownership because RPI is used elsewhere in U.S. patent law and the agency wanted to avoid confusion, said Bob Bahr, PTO’s senior patent counsel.
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Representatives from the Application Developers Alliance (ADA) and Public Knowledge -- which have advocated for patent revamp legislation on Capitol Hill -- also praised the PTO’s proposed rules during the hearing. Representatives from groups that have been critical or skeptical of the joint push from the White House and Congress to address abusive patent litigation urged PTO to scrap the proposed rules or substantially alter them.
HP believes the proposed rules will require the company to make changes to its patent ownership disclosure process and will increase other associated costs, but it believes the benefits of the proposed rules justify those costs, Pojunas said. HP believes the proposed rules will “level the playing field” in licensing and litigation, particularly in cases where a patent assertion entity is involved, Pojunas said.
The PTO began collecting input on possible expanded ownership disclosure rules in 2011 in response to concerns about abusive patent litigation, said Andrew Hirshfeld, PTO deputy commissioner-patent examination policy. Those concerns eventually led President Barack Obama to direct further PTO action on possible rules as part of his June 2013 executive actions meant to address abusive patent litigation (CD June 5 p12 ).
Pojunas said PTO should expand its requirements for ownership disclosures after the agency grants a patent. The proposed rules would require post-grant ownership disclosure when an entity pays a patent maintenance fee and when the patent is involved in a case before the PTO. Maintenance fees are due only once every four years, which HP believes is too long a span between ownership disclosures, Pojunas said.
Public Knowledge also supports the PTO’s proposed rules, said Charles Duan, director of the group’s Patent Reform Project. The proposed rules would be useful for the public and for PTO patent activities, particularly for any entity trying to avoid abusive patent litigation threats, he said. The proposed rules would also aid patent landscape research, which could be particularly important given the debate on Capitol Hill on patent revamp legislation, Duan said. He suggested PTO allow entities to submit a unique identifier for use in ownership disclosures, which would be consistent with the Department of the Treasury’s Legal Entity Identification System.
Tim Sparapani, ADA vice president-law, policy and government relations, urged the PTO to move forward with its proposed rules rather than wait for Congress to act on patent revamp legislation. “Real reform” is needed to require patent owners to take a “bare minimum of responsibility,” said Sparapani, who was also speaking on behalf of the pro-revamp Main Street Patent Coalition. The Senate Judiciary Committee announced it would mark up the Patent Transparency and Improvements Act (S-1720) at an executive business meeting March 27. Committee Chairman Patrick Leahy, D-Vt., has not yet circulated an expected compromise version of the bill, which is still under negotiations, a committee aide told us.
Some limited expansion of PTO patent ownership disclosure requirements is needed, but the Intellectual Property Owners Association believes the PTO “needs to go back to the drawing board” and scrap the rules it’s proposing, said IPO Executive Director Herb Wamsley. IPO is concerned that the U.S. economy and innovation may be adversely affected “by requiring such comprehensive and far-reaching” disclosure requirements, he said. The costs associated with the proposed rules far outweigh any perceived benefits, and PTO has failed to adequately explain the need for “such far-reaching rules,” Wamsley said.
The Inventors Network of the Capital Area believes the proposed rules are “entirely unnecessary” and are borne out of “a frenzy in the air” about perceived threats to the U.S. patent system, said IP lawyer Raymond Van Dyke, speaking for the group. Although the group agrees PTO must address abusive patent litigation, it believes the proposed rules will create market uncertainties that will stifle startups and other innovators, Van Dyke said.