Tonight, I suggest reading the Wall Street Journal article Patent Reform Bill Arises Again in Congress, discussing Congress' latest effort to change US patent law to address patent litigation abuse.
If you want details, here's Innovation Act 2015, which I will refer to as the Bill. If you want a brief account of Congress' latest patent reform, here's the key changes with brief comments:
1. Attorney Fee Awards - Current law permits the recovery of attorney fees to the prevailing party in an exceptional case, while the new law would require an award attorney fees to the prevailing party unless a judge finds that (1) the legal position and litigation conduct of the non-prevailing party was reasonably justified in law and fact; or (2) special circumstances (e.g., severe hardship to inventor) make attorney fee awards unjust. If the patent owner cannot pay the attorney fees, the court can make "the interested parties" (e.g., investors) pay the attorney fees.
My comment - This is a major change from the American rule where each party pays its own attorney fees. It will reduce patent litigation by smaller companies as they will now have to bear the risk of paying all of the attorneys if they lose and a court decides the legal position was unjustified and cannot establish special circumstances. No doubt many defendants may want this, but the Supreme Court's Highmark and Octane decisions adequately protect the "poor defendants" who hope to reduce patent litigation to just a "sport of kings."
2. Complaints Need Claim Charts - When a patent owners sues for patent infringement, the complaint will need to include a claim chart showing how the claim(s) read on the accused product or process except if it cannot be reasonably known before filing the complaint. Form 18 governing the content of complaints is eliminated, but not if you are pharmaceutical company.
My comment - this higher pleading standard will eliminate some patent infringement suits, because preparing a claim chart makes one stare at the infringement case. If you can't do a claim chart, maybe the case should not be filed. Placing the initial cost of a claim chart on the patent owner is better than asking a court to take on a poorly researched case that wastes court resources and defendant's money. Not sure eliminating Form 18 is useful. The Judicial Conference already says it plans to eliminate Form 18 in 2015 and why give pharmaceuticals "a free pass" on Form 18?
3. PTAB Claim Construction - The Bill proposes to replace the Patent Trial and Appeal Board (PTAB)'s broadest reasonable interpretation (BRI) for claims in inter partes review, post-grant review, and covered business methods with the court's narrower interpretation of claims.
My comment - This will help patents survive invalidity challenges in the USPTO, and better corresponds to the reality that patent owners rarely succeed on motions to amend claims.
4. Limit Discovery - This has a couple of parts: (1) claim construction must happen before much discovery occurs; and (2) only large companies or posting a bond will get discovery of non-core documents.
My comment - Claim construction before significant discovery sounds right, but saying a large company gets discovery without posting a bond only increases their advantages over a smaller company, and may raise disputes on whether certain requested discovery is "core" or "non-core."
5. Willful Infringement - The Bill would require demand letters identify the patent, the patent owner, accused product, and importantly how the product infringes at least one claim of the patent.
My comment - This imposes another claim chart into the process of patent enforcement, which of course helps defendants avoid treble damages by merely showing a claim chart did not accompany the demand letter.
6. Transparency of Ownership - This penalizes a patent owner who fails to update the USPTO within 90 days on changes of ownership with no enhanced damages, or attorney fees and an award of attorney fees to the defendant who spent money researching the ownership information.
My comment - Patent ownership should be transparent during enforcement, but the consequences of missing the 90 day window sounds draconian. Paying the attorney fees to find out the actual ownership should suffice.
7. Stay of Customer Suits - Courts may stay (suspend) a patent infringement suit of a customer lawsuits when the manufacturer of the product challenges the patent.
My comment - Why would anyone sue a customer?
Copyright © 2015 Robert Moll. All rights reserved.
Showing posts with label ownership. Show all posts
Showing posts with label ownership. Show all posts
Friday, February 6, 2015
Wednesday, December 10, 2014
Professor Robin Feldman - Transparency - US Patent Ownership
If you are interested in the problems arising from the ability to hide US patent ownership, I recommend reading Professor Robin Feldman's article Transparency proposing regulation borrowed from corporate securities law to identify the owners of US patents. Professor Feldman asks: "Who stands to win and lose when a patent system created to foster innovation is being utilized to hide and distort patent ownership?"
From the abstract of the article:
"The United States patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim as their own. As the system has evolved, however, it bears little resemblance to the idealized form. Little scholarship has addressed problems related to notice within the modern patent system, largely because these problems have sprung up so recently. In the last five to seven years, an entire Hobbit’s world has been created under the foliage. Moreover, historic scholarly discussions of notice generally have focused on the role of governmental actors in ensuring that a patent can be properly understood and interpreted. In contrast, this article argues that market information is a critical element of the notice function of patents. One can think of the mechanisms for providing that market information as 'Transparency'.
To address transparency insufficiencies, one need not write on a blank slate. Rather, this article suggests borrowing from the substantial body of well-developed doctrine and literature concerning disclosure in the realm of corporate securities and explores how these doctrines could be molded to patent concerns.
The patent asset is imbued with public interest by virtue of the fact that it is a government grant, bestowed for constitutional purposes. As with the trading of public securities, the trading of an asset imbued with the public interest must be sufficiently regulated to ensure proper functioning of that trading market."
Copyright © 2014 Robert Moll. All rights reserved.
From the abstract of the article:
"The United States patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim as their own. As the system has evolved, however, it bears little resemblance to the idealized form. Little scholarship has addressed problems related to notice within the modern patent system, largely because these problems have sprung up so recently. In the last five to seven years, an entire Hobbit’s world has been created under the foliage. Moreover, historic scholarly discussions of notice generally have focused on the role of governmental actors in ensuring that a patent can be properly understood and interpreted. In contrast, this article argues that market information is a critical element of the notice function of patents. One can think of the mechanisms for providing that market information as 'Transparency'.
To address transparency insufficiencies, one need not write on a blank slate. Rather, this article suggests borrowing from the substantial body of well-developed doctrine and literature concerning disclosure in the realm of corporate securities and explores how these doctrines could be molded to patent concerns.
The patent asset is imbued with public interest by virtue of the fact that it is a government grant, bestowed for constitutional purposes. As with the trading of public securities, the trading of an asset imbued with the public interest must be sufficiently regulated to ensure proper functioning of that trading market."
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, October 19, 2014
USPTO - Assignments
The USPTO Frequently Asked Questions about Assignments has information on patent assignments.
Copyright © 2014 Robert Moll. All rights reserved.
Copyright © 2014 Robert Moll. All rights reserved.
Friday, March 28, 2014
USPTO - Public Hearings on Proposed Attributable Ownership Rules - Professor Feldman's Written Testimony
As a follow up to USPTO - Public Hearings on Proposed Attributable Ownership Rules, Professor Feldman of UC Hastings Law School sent a link to her written testimony on the proposed attributable ownership rules on March 26, 2014.
Professor Feldman persuasively argues why it is important to identify the parties to a transaction. As she puts it: "shell games and hide-and-seek rarely make for an efficiently functioning market." She also points out the asymmetry in discovery that allows patent trolls to assert patents and obtain nuisance settlements as part of why transparency is important.
I don't see a reasonable argument in favor of allowing parties to purposely cloak ownership. However, from my perspective as a patent attorney, the proposed rules to identify patent ownership numerous times would impose a burden on many patent owners. It may help solve an aspect of the patent troll problem, but at a significant cost. For example, a patent term running 20 years from the filing date can "out live" management of a tech company, the inventors, and the patent attorneys. Thus typical discontinuity that can occur multiply times during the patent term will impose an administrative burden to ensure ownership changes are promptly reported over the patent term. The time we need to know attributable ownership is when monetizing activity ensues (e.g., licensing negotiations or patent infringement suit filed or threatened).
It will be interesting to see if the USPTO modifies the proposed rules as they appear likely to raise patent prosecution costs for all and result in patent loss for what may be in many cases an inadvertent mistake.
Copyright © 2014 Robert Moll. All rights reserved.
Professor Feldman persuasively argues why it is important to identify the parties to a transaction. As she puts it: "shell games and hide-and-seek rarely make for an efficiently functioning market." She also points out the asymmetry in discovery that allows patent trolls to assert patents and obtain nuisance settlements as part of why transparency is important.
I don't see a reasonable argument in favor of allowing parties to purposely cloak ownership. However, from my perspective as a patent attorney, the proposed rules to identify patent ownership numerous times would impose a burden on many patent owners. It may help solve an aspect of the patent troll problem, but at a significant cost. For example, a patent term running 20 years from the filing date can "out live" management of a tech company, the inventors, and the patent attorneys. Thus typical discontinuity that can occur multiply times during the patent term will impose an administrative burden to ensure ownership changes are promptly reported over the patent term. The time we need to know attributable ownership is when monetizing activity ensues (e.g., licensing negotiations or patent infringement suit filed or threatened).
It will be interesting to see if the USPTO modifies the proposed rules as they appear likely to raise patent prosecution costs for all and result in patent loss for what may be in many cases an inadvertent mistake.
Copyright © 2014 Robert Moll. All rights reserved.
Saturday, March 8, 2014
USPTO - Public Hearings on Proposed Attributable Ownership Rules
The USPTO will hold public hearings to get input on the proposed attributable ownership rules on March 13 and 26, 2014. The USPTO is apparently addressing the criticism regarding the lack of public input and the likely impact of these proposed rules. Losing a valid patent due to someone missing a change in ownership is draconian even if you have the right to petition against that result. It will be interesting to see if the USPTO modifies the rules in response as they appear likely to raise patent prosecution costs and may result in loss of patent rights for what will be in many cases an inadvertent mistake.
Here's the USPTO notice:
"The public is invited to attend the hearings in person or via Webcast. Additionally, the public is invited to give testimony in person at the hearings and/or to submit written comments about the proposed rules. The deadline for requesting to give testimony has been extended to Wednesday, March 12, 2014, and the deadline for submitting written comments has been extended until Thursday, April 24, 2014.
USPTO Madison Auditorium North, Concourse Level
San Francisco: http://www.uspto.gov/patents/init_events/ao_agenda_san_francisco_3-26-2014.pdf"
Copyright © 2014 Robert Moll. All rights reserved.
Here's the USPTO notice:
"The public is invited to attend the hearings in person or via Webcast. Additionally, the public is invited to give testimony in person at the hearings and/or to submit written comments about the proposed rules. The deadline for requesting to give testimony has been extended to Wednesday, March 12, 2014, and the deadline for submitting written comments has been extended until Thursday, April 24, 2014.
The attributable ownership proposed rules
require that the attributable owner, including the ultimate parent entity, be
identified during the pendency of a patent application and at specified times
during the life of a patent. More details about the attributable ownership proposed rules are available here:
Hearing Thursday, March 13, 2014, from 1 to 4 p.m.
(ET) USPTO Madison Auditorium North, Concourse Level
Madison
Building
600
Dulany Street
Alexandria,
VA 22314
Webcast
Access Information:
Event
number: 990 499 952
Event
password: 12345"
Event
address for attendees:
Hearing Wednesday, March 26, 2014, from 9 a.m. until
noon (PT)
UC
Hastings College of the Law
Louis
B. Mayer Lounge
198
McAllister Street
San
Francisco, CA 94102
LiveStream
Access Information:
Draft agendas are available here:
Alexandria: http://www.uspto.gov/patents/init_events/ao_agenda_alexandria_3-13-2014.pdf
San Francisco: http://www.uspto.gov/patents/init_events/ao_agenda_san_francisco_3-26-2014.pdf"
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, February 4, 2014
USPTO - Proposed Rules Require Many Identifications of Attributable Owner To Avoid Abandonment of Application and Loss of US Patent?
On January 24, 2014, the USPTO notified that it proposes to change the rules to identify the attributable owner on filing of an application (or soon after), whenever ownership of the application changes, when the issue fee and maintenance fees are paid, and when a patent is involved in supplemental examination, ex parte reexamination, and a trial before the Patent and Trial Board (PTAB).
A theme for all these requirements is it will increase transparency and reduce patent litigation abuse, but it is unclear how identifying the attributable owner multiple times during pendency of the application is necessary. Maybe it gives big tech a way to track and monitor third party patents.
It will increase the cost of prosecuting applications and maintaining patents and even result in abandonment of an application or lapse of U.S. patent whenever someone fails to identify the attributable owner to the USPTO within a non-extendable three months. Congress is the legislative body that has a process for ensuring we discuss whether the benefit of this ownership rules outweigh the cost of subjecting owners to loss of US patent rights.
The proposed rule also raises a question if these rules exceed the USPTO law making authority.
Under the proposed rules someone can lose a US patent even if it is not the subject of any licensing or litigation activity simply if they fail to update their ownership records within three month. If a patent is the subject of litigation, ownership must be stated in the complaint. To say you can petition if you have delayed in updating the records is insufficient, because the USPTO may decline to grant the petition. I wouldn't be surprised to see articulate comments opposing this proposal.
See the USPTO notice on the proposed rules: Changes to Require Identification of Attributable Owner.
Copyright © 2014 Robert Moll. All rights reserved.
A theme for all these requirements is it will increase transparency and reduce patent litigation abuse, but it is unclear how identifying the attributable owner multiple times during pendency of the application is necessary. Maybe it gives big tech a way to track and monitor third party patents.
It will increase the cost of prosecuting applications and maintaining patents and even result in abandonment of an application or lapse of U.S. patent whenever someone fails to identify the attributable owner to the USPTO within a non-extendable three months. Congress is the legislative body that has a process for ensuring we discuss whether the benefit of this ownership rules outweigh the cost of subjecting owners to loss of US patent rights.
The proposed rule also raises a question if these rules exceed the USPTO law making authority.
Under the proposed rules someone can lose a US patent even if it is not the subject of any licensing or litigation activity simply if they fail to update their ownership records within three month. If a patent is the subject of litigation, ownership must be stated in the complaint. To say you can petition if you have delayed in updating the records is insufficient, because the USPTO may decline to grant the petition. I wouldn't be surprised to see articulate comments opposing this proposal.
See the USPTO notice on the proposed rules: Changes to Require Identification of Attributable Owner.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, April 1, 2013
Microsoft Lists All Patents on the Web - The Knowledge Trap
On March 28, 2013, Brad Smith, Microsoft's GC and Executive VP, Legal and Corporate Affairs, mentioned in Enhancing Transparency: Putting Microsoft's Patents on the Web that Microsoft has published information (e.g., patent number, title, and country) regarding all Microsoft owned patents on the Web. The actual content of the patent will be available through the US patent databases (e.g., USPTO, Google Patent Search, and Free Patents Online).
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, March 24, 2013
Written Comments on USPTO's Proposals for Recording Ownership During Application Pendency and Patent Term
The USPTO recently proposed to increase transparency regarding ownership of US patent applications and US patents. The drivers of the initiative (e.g., patent trolls use of shell corporations) seem unclear, but it does sound like a good idea-- after all we should be able to efficiently determine who owns a given application or a patent. However, the benefit of identifying "the real-party-in-interest" at all stages will cost something on every application filed as patent attorneys and staff charge to maintain ownership records from the filing date to the end of the patent term. "Dangnabbit, I thought you would do it for free!"
Hopefully, the USPTO will not implement rules to increase transparency until it addresses the costs and other problems raised in some of the written comments from AIPLA, IPO, DOJ, American Antitrust Institute, Article One Partners, Coalition for Patent Fairness, HP, Intellectual Ventures, and Novartis, plus individuals: Professor Colleen Chien, Professor Robin Feldman, Professor Arti Rai, and patent attorney Alan Minsk.
For details see the following written comments made in response to the Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2013 Robert Moll. All rights reserved.
Hopefully, the USPTO will not implement rules to increase transparency until it addresses the costs and other problems raised in some of the written comments from AIPLA, IPO, DOJ, American Antitrust Institute, Article One Partners, Coalition for Patent Fairness, HP, Intellectual Ventures, and Novartis, plus individuals: Professor Colleen Chien, Professor Robin Feldman, Professor Arti Rai, and patent attorney Alan Minsk.
For details see the following written comments made in response to the Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, November 30, 2012
PTO Seeking Transparency in Patent Ownership Roundtable
The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, March 9, 2012
Bankruptcy Judge Bars Apple's Patent Suit Against Kodak
Today, the media gave lots of coverage to the bankruptcy judge's ruling to bar Apple's patent infringement suit against Kodak. It's appears to be an act of mercy, but could complicate assessing the value of Kodak patents since Apple may have a legitimate claim for joint ownership. Here's links to articles giving the details below:
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, February 15, 2012
DOJ Closes Investigations of Google's Acquisition of Motorola Mobility and Apple, Microsoft and RIM's Acquisitions of the Nortel Patents
On February 13, 2012, the Department of Justice's Antitrust Division issued a statement that it is closing the investigations of Google's acquisition of Motorola Mobility, Apple's acquisition of patents held by CPTN (formerly owned by Novell), and Apple, Microsoft, RIM and other's acquisition of the Nortel patents. DOJ believes each acquisition is unlikely to substantially lessen competition given Apple and Microsoft's clear commitment to license its standard essential patents (SEP) on fair, reasonable, and non-discriminatory (FRAND) terms and not seek an injunction on the SEPs. In contrast, the DOJ appears to criticize Google's unwillingness to make a clear commitment on future use of its patents. The DOJ also stated a willingness to jump into the fray to stop any anticompetitive use of SEP rights. Hopefully, the DOJ's statement and analysis will bring some order in the mobile computing patent war. I think this is welcome news for consumers (Click here for the DOJ's statement)
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, January 23, 2012
Twist in Kodak's Bankruptcy - Apple Claims Ownership of Kodak Patents
On January 19, 2012, Apple filed papers claiming ownership of Kodak's digital imaging patents, including US Patent No. 6,292,218. Apple argues Kodak can't attach an interest on a patent it doesn't own, and Kodak misappropriated and filed patent(s) based on confidential information Apple gave Kodak in the early 1990's.
Mr. Macari's article has details: Apple claims ownership in key Kodak patents on digital camera
Of course, ownership turns on which companies employees are inventors. I expect it will be difficult to establish only Apple inventors (and not Kodak inventors!) should be named on the '218 patent by clear and convincing evidence. It's asking too much of the Kodak employees, don't you think? However, sole ownership may not be necessary. Apple only needs to prove its employee(s) made a small inventive contribution (e.g., 1%) and may allow so generously that Kodak inventors did the rest (e.g., 99%)! This situation would result in equal ownership, allowing Apple freedom of operation with respect to the patent as well as the ability to license the patent to anyone wanting better terms than those offered by Kodak.
Copyright © 2012 Robert Moll. All rights reserved.
Mr. Macari's article has details: Apple claims ownership in key Kodak patents on digital camera
Of course, ownership turns on which companies employees are inventors. I expect it will be difficult to establish only Apple inventors (and not Kodak inventors!) should be named on the '218 patent by clear and convincing evidence. It's asking too much of the Kodak employees, don't you think? However, sole ownership may not be necessary. Apple only needs to prove its employee(s) made a small inventive contribution (e.g., 1%) and may allow so generously that Kodak inventors did the rest (e.g., 99%)! This situation would result in equal ownership, allowing Apple freedom of operation with respect to the patent as well as the ability to license the patent to anyone wanting better terms than those offered by Kodak.
Copyright © 2012 Robert Moll. All rights reserved.
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