Roundtable on Real Party in Interest Information - United States Patent

Roundtable on Real Party in Interest Information - United States Patent

UNITED STATES PATENT AND TRADEMARK OFFICE ROUNDTABLE ON REAL-PARTY-IN-INTEREST INFORMATION Alexandria, Virginia Friday, January 11, 2013 Roundtabl...

3MB Sizes 0 Downloads 1 Views

Recommend Documents

United States Patent I
Nov 23, 2004 - SKIES 01' HEN SLO'Il USING TEE EDGE LOGIC LISP. 315. PERFORMING E I'INSL CUS'IOLIILII'I'ION OI' TIE. PADR

Real Party in Interest brief - CAAFlog
Real Party in Interest. TO THE JUDGES OF THE UNITED STATES COURT OF APPEALS. FOR THE ARMED FORCES: Doug Ottenwess. LT, J

Real Party in Interest is CHRISTOPHER ARCHER
This Relator's Motion for Emergency Stay is brought by Relator, WENDY ARCHER, who shows in support: 1. Relator is WENDY

REAL PARTY in INTEREST and - Cochise County
Revised 06/09. REAL PARTY in INTEREST and REPRESENTATION. CORPORATE RESOLUTION is a corporation/limited liability compan

United States Patent
Apr 22, 2008 - Internet Movie Database, Indiana Jones and the Last Crusade. (1989), [http:/WWW.imdb.c0m/title/tt0097576]

(12) United States Patent
Jan 12, 2012 - May 6, 2014. US. Patent o> ll..||||ll| o. 352% |gv?maMil? “whvl:r. \V' w> A08; \1 g > > m IIF > mm. 0E

Patent Watch United States Patents
Semino, Carlos, Cambridge, MA 02139 (US). Applicant: Massachusetts ... Inventors: Soria Escoms, Bernat, E–03540 Alican

(12) United States Patent - Arzeda
Baker et al. US008340951B2 ... (75) Inventors: David Baker, Seattle, WA (US); ... List, James Anderson, Enrico A. Stura,

Real Party in Interest Doctrine - St. John's Law Scholarship Repository
Dec 22, 2012 - December 2012. CPLR 3212: Dobkin "Real Party in Interest. Doctrine" Not Extended to Motion for Summary. J

Petitioners, vs. Respondent. Real Party in Interest. - League of
Real Party in Interest. Superior Court of the State of California,. County of Santa Clara Court Case No. 1-06-CV-072630.

UNITED STATES PATENT AND TRADEMARK OFFICE

ROUNDTABLE ON REAL-PARTY-IN-INTEREST INFORMATION

Alexandria, Virginia Friday, January 11, 2013

Roundtable on Real Party in Interest Information

1

PARTICIPANTS:

2

Welcoming Remarks

3

DAVID KAPPOS Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

4 5 Overview 6 7 8

STUART GRAHAM Chief Economist, USPTO MICHELLE LEE Director Silicon Valley Office, USPTO

9 10 11 12

SAURABH VISHNUBHAKAT Expert Advisor, USPTO Roundtable STUART GRAHAM Chief Economist, USPTO, Moderator

13 14 15

ARTI RAI Duke University School of Law MARIAN UNDERWEISER IBM

16 17 18

COURTENAY BRINCKERHOFF Foley & Lardner KENNETH NIGON American IP Law Association

19 20

JEFFREY WILDER U.S. Department of Justice, Antitrust Division

21 22

FIONA SCOTT MORTON Yale School of Management Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Page: 2

Roundtable on Real Party in Interest Information

1 2

PARTICIPANTS (CONT'D): MICHAEL LUBITZ Global Technology Transfer Group

3 4 5

HERBERT WAMSLEY Intellectual Property Owners Association LISA MARKS McINTYE Google

6 7 8

KEVIN GREENLEAF Schwegman, Lundberg & Woessner COLLEEN CHIEN Santa Clara University School of Law

9 10 11

MATTHEW RAPPAPORT IP Checkups SCOTT POJUNAS Hewlett Packard

12 13 14

KRISTI NICHOLES BURTON Arent Fox DAVID MARTIN M·CAM

15 16 17

WILLIAM HOLSEY Holsey PC GEORGE SPENCER Antonelli, Terry, Stout & Kraus

18 19 20 21

ERIK LIEBERMAN Food Marketing Institute Follow-up and Closing Remarks STUART GRAHAM Chief Economist, USPTO

22 Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Page: 3

Roundtable on Real Party in Interest Information

1

Page: 4

P R O C E E D I N G S

2

(8:30 a.m.)

3

MR. KAPPOS:

Well, good morning,

4

everyone.

5

USPTO here bright and early on a Friday morning in

6

now mid-January.

7

USPTO.

8

Happy New Year, as we're still quite early in

9

2013.

10

Thank you very much for coming over to

I'm Dave Kappos, Director of the

And I think it's not too late still to say

You know, each of the last few years has

11

brought pretty exciting, far-reaching changes for

12

our IP laws; and even though we're very early in

13

the year 2013, I'll make my own little prediction

14

that 2013 promises to be no exception.

15

always, input from the intellectual property

16

community -- from those of you seated around the

17

large horseshoe-shaped table this morning, as well

18

as others who have joined us both in person here

19

in Alexandria, Virginia, as well as on our webcast

20

-- input from the intellectual property and

21

innovation community of the United States is

22

extremely important.

And, as

To understate it, it's

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 5

critical.

2

Looking back over the last several

3

years, I really believe that roundtables like this

4

one, and of course in the case of the America

5

Invents Act, the many roadshows that we conducted

6

over the last year-plus have been truly

7

indispensable to the agency in making us more

8

transparent and more user friendly and more

9

informed and, frankly, better equipped to put in

10

place good rules, good interpretations, good

11

policy.

12

So, in advance of anyone even speaking

13

this morning, let me say thank you again for your

14

preparation, for your participation, for your

15

guidance to our agency.

16

benefit from it -- "you" being everyone who cares

17

about innovation in this country -- and, most

18

importantly, the American people benefit from it.

19

And it's this kind of dialogue that creates

20

win-win results all around for our country.

21 22

We benefit from it, you

Now, of interest to us today is your input on our proposal to collect so-called Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 6

1

real-party-in-interest, or RPI, information

2

regarding patent applications and patents and even

3

other related processes and, specifically, the

4

question of:

5

this kind of information and, if so, what are your

6

thoughts about how we do it and when we do it, in

7

what forms we do it and how deep we reach into

8

determining what a real-party-in-interest means

9

and what definitions we should use for determining

Do you agree that we should collect

10

what a real-party- in-interest is and any other

11

points that have been raised in our notice that

12

sparked this meeting.

13

Now, at a macro level -- right? -- at a

14

high level, our perspective is simply that the

15

marketplace cannot work effectively unless

16

innovators know what a patented invention covers

17

and know some reasonable amount about who owns it.

18

We need as much transparency as possible in order

19

to get intellectual property rights into the hands

20

of those who are best able to make the investments

21

and create the jobs and drive growth and generate

22

economic activity that, after all, is the purpose Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 7

for having a patent system in the first place.

2

Now, this new RPI initiative that we're

3

here to talk about today can have several

4

benefits, not only, we think, hopefully improving

5

the marketplace for innovation but also reducing

6

gamesmanship in litigation strategies and

7

improving the operation of the USPTO all around

8

the board.

9

Now, with a more complete ownership

10

record, the public has a more comprehensive

11

understanding of what patent rights are being

12

maintained and by whom; the financial markets have

13

more complete information about the valuable

14

assets being generated and held by patent owners;

15

and inventors and manufacturers have a better

16

understanding of the competitive environment in

17

which they are operating, allowing them to be more

18

efficient in obtaining and allocating resources

19

that they need.

20

Now, RPI information also could benefit

21

the USPTO, in fact, in several pretty important

22

ways.

First, it enables our Patent Trial and

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 8

1

Appeal Board to identify potential conflicts of

2

interest much more effectively.

3

our Board to potential statutory bars to

4

conducting proceedings.

5

importantly and certainly very importantly, it

6

enables our Examiners to do a more effective job,

7

to understand whose patent application they're

8

actually examining as they look at it.

Second, it alerts

And perhaps most

9

Now, for the agency, we're willing to do

10

our part in creating an effective set of rules and

11

guides here.

12

part.

13

our assignment recording fee, which was $40, to

14

$0.

15

We're not going to charge anyone anything, not a

16

single penny, right?

17

the question, "Well, define 'zero.'" It's nothing.

18

And we're trying to send a message that we'll do

19

our part, we will absorb the cost to do that work,

20

because it's important and we want to make it as

21

easy as possible for folks to provide this

22

information.

In fact, we're already doing our

If you look at our fees, we have dropped

So, we're sending a very strong message.

You know, when people ask

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 9

Now, who constitutes a

2

real-party-in-interest or a privy is, in fact, a

3

highly fact-bound question, especially the issue

4

of whether a party who is not a named participant

5

in a given proceeding nonetheless constitutes a

6

real-party-in- interest or a privy to that

7

proceeding.

8

agree that there's no bright line test -- we get

9

that -- for determining the necessity or the

10

necessary quantity and qualities, degrees of

11

participation that make one a

12

real-party-in-interest or a privy based on what we

13

know to be the so-called control concept.

14

Courts and commentators certainly

So, it's a difficult area to analyze.

15

There is certainly a lot of jurisprudence on it;

16

and, as a result, the USPTO hasn't tried to

17

enumerate particular factors regarding any control

18

theory or real-party-in-interest or privy in the

19

proposal that we put out.

20

the RPI or privy dispute that may arise in various

21

proceedings, we want to hear from the people in

22

this room, which, as you can see from our notice,

And instead, to resolve

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 10

1

we're open to considering on a case-by-case and

2

very, very fact-specific basis.

3

So, in sum, the USPTO is here today

4

looking for input on our RPI proposal, all input

5

that the folks here in the room and those watching

6

by webcast can offer us, input on parties and

7

their ability to establish standing, input on

8

challenging standing, input on flexibility to

9

consider the specific facts and relevant case law

10 11

in resolving real-party- in-interest disputes. But the core of our objective in this

12

matter is to come back to where I started:

13

Transparency, transparency.

14

transparency, and with this roundtable today we

15

want to hear your thoughts on how we can improve

16

transparency about the subject

17

real-party-in-interest.

18

your comments on the definitions we proposed,

19

suitability of other definitions or standards,

20

everything that you want to offer input on.

21 22

We're in an era of

We welcome, we encourage

So, thanks again for your participation, and now I'm going to turn it over to my truly Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 11

1

close colleague here at USPTO, our chief

2

economist, Dr. Stuart Graham.

3

DR. GRAHAM:

Thank you, David.

Good

4

morning.

I am pleased to be moderating our

5

roundtable this morning.

6

highlighted some of the benefits of collecting

7

real-party-in-interest information, benefits that

8

extend to operational efficiencies for the USPTO,

9

transactional efficiencies in the marketplace for

Director Kappos has

10

invention, and information efficiencies in the

11

litigation and licensing environment.

12

The USPTO published a Request for

13

Comments on November 23, 2011, regarding whether

14

regulations should be promulgated for the

15

collection of assignment and real-party-

16

in-interest information for both applications and

17

issued patents.

18

received from the public, all of which are

19

available on the USPTO website, we heard that

20

without specific proposals many of the respondents

21

felt unable to adequately respond.

22

that, in the November Federal Register notice that

In reviewing the comments that we

In response to

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 12

1

announced this roundtable, we offered what

2

amounted to straw men definitions of

3

real-party-in-interest to facilitate discussion at

4

this roundtable today.

5

The first of these definitions, an

6

admittedly broader definition, RPI would

7

correspond to those entities having the legal

8

right to enforce the patent, in other words, those

9

parties that would be necessary and sufficient to

10

bring a legal infringement action.

11

that this information is directly relevant to

12

identifying conflicts of interest that might arise

13

in examination context and is consistent with the

14

need to make prior art determinations, because it

15

identifies all parties that might have a claim to

16

ownership of the patent application or issued

17

patent.

18

disclosure of exclusive licensees in certain

19

cases.

20

We anticipate

This definition would likely require

Under the second admittedly narrower

21

definition, the interested parties needing to be

22

disclosed would be limited to the legal title Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 13

1

holders and ultimate parent entities of the patent

2

application or issued patent.

3

parent entity" could be based on the definition

4

along with the accompanying examples set forth in

5

our regulations, which define it as an entity that

6

is not controlled by any other entity.

7

definition may limit the entities that need to be

8

identified based on the assumption that although

9

not every interested entity would be listed,

The term "ultimate

Such a

10

information about these other parties, if needed,

11

could in most cases be deduced or obtained from

12

the information provided.

13

We set these definitions out as an

14

opportunity to begin a discussion and offer an

15

opportunity to respond to particular definitions.

16

But certainly we are open, as Director Kappos

17

suggested, to more thought on this issue, and it's

18

one of the reasons why having a roundtable like

19

this one today is so important.

20

So, we are interested in hearing today

21

from the roundtable participants about the

22

workability of these or other definitions, as well Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 14

1

as the timing of collecting such information.

2

What are the consequences, for instance, of

3

requiring such information during the prosecution

4

of the application?

5

And what are the appropriate trigger events for

6

collecting this information?

7

And what about after issue?

With that as background, let me begin

8

the discussion by thanking all of you live in our

9

offices here in Alexandria, Virginia, and also the

10 11

webinar audience for joining us today. As you can see by the agenda that you

12

received upon arrival, we have 20 guests

13

prescheduled to share commentary.

14

your name, I ask that each of you please speak

15

from the podium.

16

When I call

Also, because of the tight timeline

17

today, each guest has been allotted either 5 or 10

18

minutes to share commentary with us.

19

a red card at the 1-minute warning mark to request

20

that you conclude your commentary so that we may

21

stay on scheduled as much as possible, and that

22

will allow us to have sufficient time at the end

I will raise

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 15

for a robust interactive discussion.

2

Lastly, after prescheduled commentary is

3

complete, we will open the floor to the audience

4

for any additional views.

5

Now, with that, let us begin with

6

Professor Arti Rai from Duke University School of

7

Law.

8

Professor Rai.

9

PROFESSOR RAI:

Thank you very much to

10

the U.S.

11

Kappos, Dr. Graham for inviting me to speak at

12

this very important event.

13

Patent and Trademark Office, Director

Let me preface my remarks by saying I'm

14

speaking as somebody who teaches not only patent

15

law but also administrative law, in fact have

16

written and taught in the area of administrative

17

law for about 10 years now.

18

the American Bar Association Administrative Law

19

Section's Committee on Intellectual Property.

20

I will be speaking on some of the administrative

21

law issues with respect to the PTO proposal.

22

should emphasize, however, that my comments

I am also co-chair of

So,

I

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1 2

Page: 16

represent only my own personal views. So, as noted, I'd like to focus my

3

commentary on a somewhat narrow but nonetheless

4

very important threshold question, and that is, of

5

course, the threshold question of whether the PTO

6

has the administrative authority to promulgate

7

rules such as those in question.

8

commentary is based on written comments I

9

submitted to the PTO on this issue a year ago.

Some of my

10

These are in the public record, and I incorporate

11

those comments by reference, if you will, in my

12

commentary today.

13

Let me begin, however, by emphasizing

14

one overarching principle, and this is a principle

15

that is important for administrative law in

16

addition to being an important overarching

17

principle, and that is what Congress wants and

18

thinks about PTO authority.

19

I think that Congress has, with the

20

passage of the America Invents Act, placed the PTO

21

even more squarely than previously was the case in

22

the world of the patent marketplace, in other Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 17

1

words, in the world of what happens after a patent

2

issues, not simply what happens during the

3

examination process.

4

So, in addition to the specific

5

authorities in the Patent statute upon which the

6

PTO can draw -- and I will talk about those in a

7

moment -- we have a statute, the America Invents

8

Act, that places what happens to a patent after it

9

issues squarely in the PTO's bailiwick.

10

To put the point another way, with the

11

AIA's passage -- AIA's passage -- we have a sort

12

of congressional endorsement of the agency power

13

that courts like the U.S.

14

looked to in administrative law cases to determine

15

the contours of agency authority.

16

overarching principle.

17

Supreme Court have

So, that's an

Now, to the details of PTO statutory

18

powers.

Under the Supreme Court precedent of

19

Chrysler v. Brown, the threshold question is

20

whether an agency can promulgate rules with "the

21

force of law."

22

so if the rules are "reasonably within the

Under Chrysler, an agency can do

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 18

1

contemplation" of a congressional grant of

2

rulemaking authority.

3

proposed rules are within the PTO's fairly

4

comprehensive § 2(b)(2) authority to "govern the

5

conduct and proceedings in the Office."

6

Here, I believe the

For example, the 2005 Federal Circuit

7

decision in the Startfords case upheld, as within

8

PTO power, a fairly muscular regulation requiring

9

the applicant to provide all information

10

reasonably relevant to examination.

11

regard, the court emphasized the PTO's goal of

12

using the regulation to "perform the best quality

13

examination possible."

14

In that

In this case, the rules proposed by the

15

PTO requiring submission of continuously updated

16

information will, in the words of Startfords, help

17

the agency implement "the best quality examination

18

possible."

19

As the recent Notice points out in

20

detail, and as Dr. Graham and Director Kappos have

21

noted already, the AIA makes the question of

22

ensuring that the PTO has accurate information Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 19

1

regarding ownership of prior art significantly

2

more important than it was prior to the AIA.

3

I should emphasize, however, that the

4

PTO's statutory power to issue rules governing the

5

conduct of proceedings is not limited to

6

examination.

7

Stevens v. Tamai, the Federal Circuit has

8

emphasized and upheld, as within the scope of PTO

9

authority, regulations governing inter partes

In cases like Coopertec v. Judas and

10

reexamination and interferences.

11

Judas, for example, the Federal Circuit held that

12

the PTO could use its regulatory authority over

13

procedures to define the term "original

14

application" in a statutory provision that

15

establishes procedures for inter partes

16

reexamination.

17

In Coopertec v.

Similarly, in this case, identification

18

of real- parties-in-interest will greatly

19

facilitate proper use and disposition of the host

20

of new post-grad proceedings set out by the

21

America Invents Act.

22

Now, the PTO also has a duty under § 2A2 Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 20

1

of the Patent Statute to "disseminate to the

2

public information with respect to patents."

3

detailed contours of this power have not been

4

fleshed out as clearly by the Federal Circuit as

5

the contours of the 2(b)(2) power.

6

plain meaning, reading of the language with

7

respect to the duty, it would appear to require

8

giving the public information regarding who the

9

current owner of the patent is.

10

The

But on the

In general, administrative law has as

11

its core the principle of transparency that

12

Director Kappos emphasized.

13

principle is particularly important where the

14

public is going to be subject to a

15

government-imposed legal requirement, i.e., a

16

patent.

17

patent law.

18

these patent requirements, we must know not only

19

what the metes and bounds of the claims are but

20

also who is asserting the claim.

21

as I have indicated, a core principle of

22

administrative law that has been upheld time and

This transparency

We are all subject to the requirements of If we are going to be subject to

Transparency is,

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 21

again by the Supreme Court.

2

So thus far I have spoken to the

3

threshold question of PTO power to promulgate the

4

rules in question, and that is the core of my

5

remarks today.

6

comment about the substance, again from an

7

administrative law perspective.

8 9

But let me conclude with one brief

As a matter of administrative law, the PTO must not only show that it has the power to

10

regulate -- to promulgate, excuse me -- the rules

11

in question but also that the rules are ultimately

12

based on a reasoned assessment of cost and

13

benefits.

14

whether the agency has done a thorough job of

15

doing this reasoned assessment is precisely the

16

sort of proceedings in which the PTO has engaged

17

over the over the last year and is engaging today.

18

The agency should carefully lay out a record for

19

why there are real benefits not only for the PTO

20

but for the patent system as a whole and for the

21

public with respect to a more complete record of

22

information about ownership.

What courts look to in determining

I think the PTO is

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 22

1

doing that, and the comments today will assist in

2

that regard.

3 4

I thank you for the opportunity to present.

5

DR. GRAHAM:

Thank you very much,

6

Professor Rai.

7

Marian Underweiser to come to the lectern.

8

Underweiser is representing International Business

9

Machines.

10

Our next speaker -- I will ask

DR. UNDERWEISER:

Ms.

Thank you very much.

11

I'd also like to thank the Patent Office for the

12

opportunity to speak about this important issue

13

this morning.

14

As I think the director explained pretty

15

well in his opening remarks, patent ownership

16

information is an important part of what we

17

consider to be the complete disclosure of a patent

18

right that provides notice to the public.

19

think certainly after hearing my remarks but the

20

remarks of the other panelists and some of the

21

comments that have been submitted, for most people

22

who operate out there in the patent community

And I

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 23

1

innovating and creating products and services,

2

this is a pretty important element of promoting

3

transparency in the patent system, and I think we

4

all should support creating a more transparent

5

patent system and not be looking for ways, in

6

worse case scenarios, that overbroad regulations

7

or requirements might create problems for

8

disclosure.

9

So, I think this is something we should

10

all actually be trying to achieve, and in

11

particular I think the question is really:

12

kind of requirements can be in place that will

13

give us the information that we're really looking

14

for without imposing an undue burden on applicants

15

and patentees?

16

the reasons why enhanced ownership information

17

will help them in examining patent applications

18

and in fulfilling their functions.

19

What

So, the PTO has described some of

Ownership transparency also has a

20

tremendous benefit to the patent community and the

21

public, like IBM.

22

them are related to market transparency.

And what are these?

A lot of We need

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 24

1

to be able to identify the complete patent

2

portfolios, for example, of entities that may

3

distribute these patents amongst uninformatively

4

named subsidiaries and affiliates, which makes it

5

very difficult to determine what the complete

6

portfolio is of that entity.

7

We also need to determine whether or not

8

we're licensed to particular patents.

And, as you

9

know, patents can pass through the hands of many

10

owners, and one of them may be a licensor.

11

order to determine that, you really need accurate

12

ownership information.

13

to figure out what is your ability to obtain a

14

license, whether it's to a particular patent or a

15

comprehensive license to a portfolio.

16

So, in

You also need to be able

And when I talk about all of these

17

things, I'm talking about making assessments about

18

the patent landscape up front before you may

19

invest a great deal of resources and research and

20

development, before you make go-to-market

21

decisions about your products and services.

22

are important issues that have to be resolved

These

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 25

1

early in the innovation process, and the way that

2

you do that in a patent landscape where there are

3

lots of issued patents out there, lots of

4

applications, is you need to have a sense for who

5

are those owners?

6

people who are likely to license you or not likely

7

to license you?

8

around?

9

answered with accurate and complete ownership

10

Are those licensors?

Are those

Are you better off designing

So, these kinds of questions can only be

information.

11

One example of this that's become of

12

interest recently is in the area of standards

13

licensing.

14

to a standards commitment unless you know who owns

15

it?

16

How do you know if a patent is subject

Another aspect of this -- so from

17

another viewpoint in thinking about how to deal

18

with patents of interest, how do I identify

19

patents of interest for the purpose of using or

20

taking advantage of the new and existing patent

21

quality provisions?

22

With the new patent quality provisions Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 26

1

created under the AIA, you have pre-issuance

2

submissions; you have post- grant review.

3

both of these proceedings have limited time

4

windows, and the parties who are using them,

5

certainly in post-grant review and in inter partes

6

review, are making a big investment in putting

7

together materials; and certainly the fee for

8

using the system is not insignificant.

9

you may be aware of is that in the context of the

And

And what

10

AIA, there was a hard-fall requirement that

11

challengers would reveal the real-

12

party-in-interest when they challenge the patent.

13

And in doing so, one takes a risk that the

14

patentee is now aware of you and may look into

15

your activities.

16

risk of an infringement suit.

17

fair in those circumstances, and in fact

18

necessary, for a party taking that risk to have

19

accurate information about patent ownership and to

20

make decisions in the first place about which

21

patents that challenger may want to investigate

22

more fully.

You may expose yourself to a And isn't it only

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 27

So, these are a lot of the reasons why

2

members of the patent community, like IBM, are

3

really interested in obtaining as complete

4

ownership information as possible.

5

Now, that brings me to the second part

6

of the inquiry here, which is really how do we do

7

it?

8

about this.

9

the PTO has suggested two possible definitions for

There are a number of different ways to go I'm sure -- in many different ways

10

the real-party-in-interest.

11

comments in response to the earlier Federal

12

Register Notice last year.

13

IBM submitted

We discussed a proposal certainly

14

similar to the PTO's proposal, the more narrow

15

proposal, to use the ultimate parent definition.

16

I think this definition eliminates some of the

17

problems people may see with a broader definition,

18

such as disclosing what may be confidential

19

relationships that give rise to exclusive licenses

20

and is, in our view, a lighter touch on obtaining

21

the kind of information that would allow you to

22

identify a complete portfolio that again may be Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 28

1

distributed amongst various different affiliates

2

and subsidiaries.

3

requirement that yet should give the patent

4

community enough information to assess the

5

landscape.

6

So, this is a narrow

And another aspect of compliance

7

involves when and how to make these disclosures.

8

So, certainly patent filing and certainly before

9

substantive exam or publication, that way, for

10

example, the published application also has the

11

necessary ownership information so the public can

12

use the pre- issuance submissions proceeding.

13

at issuance and likely at payment of maintenance

14

fees, we are confident that the public can work

15

through any compliance issues and work and create

16

a procedure that is reasonable and not overly

17

burdensome for obtaining this information through

18

the patent life cycle.

And

19

IBM, as I'm sure you're aware, has many

20

pending patent applications and issued patents at

21

any given time.

22

are willing to shoulder whatever burden is

We have for some years.

And we

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 29

1

required here to have this benefit that we think

2

is very important of having the more complete

3

ownership information for both patent applications

4

and issued patents, which we think is a very

5

important added element of serving the public

6

notice function of the patent system.

7 8 9

So, thank you very much. my remarks. DR. GRAHAM:

Thank you, Dr.

10

Underweiser.

11

Brinckerhoff from Foley & Lardner.

12

That concludes

Our next speaker, Courtenay

MS. BRINCKERHOFF:

Thank you.

I'd also

13

like to thank the Patent Office, Director Kappos,

14

and Dr. Graham for the opportunity to speak here

15

this morning.

16

but my comments here today do not necessarily

17

represent those of my partners or clients.

18

I am a partner at Foley & Lardner,

I may be the voice of dissent here

19

today, certainly the first voice of dissent that

20

you are hearing this morning.

21

defer to Professor Rai on the administrative law

22

issues, but I do question the Patent Office's

I certainly will

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 30

authority to impose its requirements.

2

The patent statute has traditionally

3

made identification and recordation of ownership

4

information optional, and that has not changed

5

with the AIA.

6

name the assignee as the applicant and makes it

7

optional to have a patent granted in the name of

8

the assignee.

9

The AIA still makes it optional to

Also, recently there was a treaty

10

statute implementation that also amended § 261

11

and, again, provided that the Patent Office should

12

record information upon request.

13

the tradition of optional recordation, optional

14

disclosure of information needs to be kept in

15

mind.

16

So, I think that

Also, I think this does seem to be a

17

policy issue.

18

more the realm of Congress where Congress can hear

19

the sides of all parties and balance the interest.

20

Economics marketplace seems to be

I'd also like to touch on some of the

21

Patent Office's justifications.

In the Federal

22

Register Notice, there were a number of Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 31

1

justifications.

2

the surface, but as a practitioner for over 20

3

years I have a question on when you dig deeper.

4

One of the justifications was to verify that the

5

power of attorney is from the proper authority.

6

There are already rules that require or ensure

7

that under 3.73 the need for board members to

8

recuse themselves in appeal, that there are

9

already requirements in your appeal brief that you

10 11

Some of them seemed convincing on

identify the real-party-in-interest. The new definition of "prior art" under

12

the AIA, while the definition is broader in some

13

respects, it's also narrower in other respects.

14

It will only come into play if the earlier prior

15

art was not published before the second

16

application.

17

will only apply to a fraction of applications, and

18

I don't think it justifies imposing a burden

19

across all applications where there may not be any

20

grace period commonly in prior art at issue.

21

The only thing of interest was the

22

So, I still think that exception

possibility that Examiners would recuse themselves Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 32

1

from examination, and so I'd like to know if the

2

Patent Office is really doing that.

3

that now?

4

implementing a program where applications would be

5

screened and assigned dependent on the Examiners,

6

I guess, investment in relationships with

7

corporations and with the Patent Office change

8

examination assignment midstream if ownership

9

changed.

Do they do

10

Are they really thinking of

Looking at the definitions from the

11

perspective of a practitioner -- I work with a lot

12

of foreign clients -- there needs to be clarity in

13

definitions if there's going to be a rule

14

requiring this.

15

bright line for real-party-in-interest, and that's

16

a problem.

17

necessary party brings in litigation.

18

patent practitioners are patent agents who have no

19

experience with litigation.

20

them to have to understand litigation rules and

21

determine who needs to be disclosed.

22

As Dr. Kappos said, there's not a

The first definition relating to the A lot of

It's burdensome for

There's also a question of whether the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 33

1

Patent Office decided not to invoke Rule 17 of the

2

Civil Rules of Procedure, which is a

3

real-party-in-interest provision.

4

take this route, maybe it should look at that,

5

because there is a body of case law around that

6

that could provide guidance if that's the

7

definition the Patent Office wants to take.

8

Otherwise, there's a question over whether there

9

is a difference.

10

If it wants to

On the limited definition, again, there

11

is a question of clarity of the statute or the

12

rule that the Notice invokes.

13

which I've never visited in my 20 years of

14

practicing.

15

of law into the patent fields, and is that

16

something that patent practitioners, particular

17

patent agencies or patent attorneys who do not

18

have access to business lawyers -- to help them

19

interpret these statutes.

20

burden to impose?

21 22

It's from 16 CFR,

So, again, it's bringing another body

Is that a reasonable

For example, the rule that the Notice sites indicates an actual person who controls an Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 34

1

entity can be the real-party-in-interest, so are

2

we going to be naming the person at the end of the

3

chain or are we supposed to stop at the corporate

4

level?

5

I also question on the broader

6

definition, the authority, and the justifications

7

for requiring the exclusive licensing information.

8

Most of the Patent Office's justifications or all

9

of the Patent Office's justifications really would

10

be satisfied with only disclosing the record title

11

holder.

12

difficulty of knowing the current information,

13

deciding -- knowing whether it has to be disclosed

14

or not, because an exclusive licensee can be

15

territorial; it could be product related; it could

16

be claim-by-claim related; it can raise a whole

17

host of complicating issues.

18

This also, I think, brings in a lot more

And all of these issues are even more

19

complicated when you consider international

20

applicants, particularly if you're working through

21

foreign law firms, that there is usually little

22

communication directly with the corporate, the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 35

1

client, the owner entity; and in many foreign

2

cultures there is much more secrecy around

3

ownership, licensing, business relationships.

4

of these could be seen as very intrusive from

5

their perspective.

6

All

The final points I'm going to go through

7

are sort of the nitty-gritty of the details that

8

were proposed.

9

disclosure at least four times during patent

The rules seem to propose

10

prosecution:

11

before it's published; if there's any change

12

during prosecution with the issue fee payment; and

13

at the maintenance fee.

14

When the application is filed;

It's important to keep in mind that

15

every transaction that requires a form to be filed

16

is going to involve 10th action cost, and

17

especially in this situation where the person

18

handling the patent applications might not know

19

inherently the information, it's going to require

20

communication to the client.

21

foreign client through the foreign agent to the

22

corporate entity, back again, these are not

Again if you got a

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

anything that can cause -- it's not an

2

insignificant burden.

3

Page: 36

Additionally, with the maintenance fee

4

payments, while that seems like an easy task, I'm

5

sure the Patent Office knows that most maintenance

6

fees are paid by non-lawyer entities.

7

you're going to have to involve a lawyer at a time

8

in a patent life when it's usually outsourced to a

9

company that's just handling a fee payment

10

So, again,

transaction.

11

So, hopefully I've given everyone who's

12

in favor of these decisions some things to think

13

about.

14

Thank you.

15

DR. GRAHAM:

Thank you, Ms.

16

Brinckerhoff.

17

Nigon.

18

Intellectual Property Law Association.

19

Next on the agenda is Kenneth

Kenneth Nigon is with the American

MR. NIGON:

Thank you very much.

AIPLA

20

appreciates the opportunity to comment on the RPI

21

Initiative.

22

knowing the RPI in some patents and applications,

While there may be some benefit to

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 37

1

we remain concerned that the administrative burden

2

of the proposed procedures is too high and likely

3

will outweigh any perceived benefits.

4

Moreover, we would need to know the cost

5

to stakeholders and at the Office and have a

6

greater understanding of the ability of the Office

7

to manage the process, as prior similar studies

8

have failed to confirm this capacity.

9

decides it needs RPI information, we strongly

10

recommend that a less burdensome procedure be

11

adopted.

12

If the PTO

We understand that the Office and the

13

public need to know information about RPIs.

14

Non-practicing entities sometimes hide their

15

ownership, and it's very difficult to determine

16

the true owner of the patent.

17

know so that they can evaluate a prior art

18

reference under 102(b)(2)(C) and evaluate the

19

credibility of evidence.

20

need to know the RPI to determine whether there's

21

a potential conflict of interest.

22

Examiners need to

Office personnel also

The number of patents that this Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 38

1

information is needed in, we believe, is very

2

small compared to the total number of patents that

3

the Office processes and the number that are

4

already issued.

5

any data to show the number of applications where

6

the information would be needed.

7

at it, in less than one percent of patents who

8

have litigated, there are existing incentives to

9

ownership that result in the real-party-in-

Here the Office has not provided

But if you look

10

interest actually being disclosed as recorded

11

assignments.

12

requires patent owners to provide RPI information

13

in a PGR and IPR proceeding.

14

And 37 CFR, Rule 42.8, already

In addition, during examinations the

15

Examiners, if they believe the RPI information is

16

important, could request it under Rule 105.

17

burden on the patentees, the procedure, we believe

18

greatly exceeds the benefits gained.

19

pointed out, four times during patent prosecution

20

and with each maintenance fee payment, the

21

practitioner would be required to investigate the

22

RPI status and file a paper with the Patent

The

As Courtenay

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 39

1

Office.

2

work, again, because in most cases the real-party-

3

in-interest is already recorded.

4

patents, but they record their assignments.

5

there's no real problem for IBM in that regard,

6

and there's no real need for them to make these

7

additional filings.

8 9

This would result in a lot of unnecessary

IBM has a lot of So,

Also, in some instances it may be difficult to determine the RPI.

As Courtenay

10

pointed out, in other countries they may not

11

understand the difference between a patent owner

12

and an RPI, and you have to convey this through a

13

translation barrier in many cases.

14

Startup companies may have made many

15

different investors, going from friends and family

16

to angel investors to venture capitalists, who

17

have different rights in who's going to determine

18

who the real-party-in-interest is there.

19

Many patent practitioners are patent

20

agents who cannot make legal judgments.

Both of

21

these requirements -- both the broad and the

22

limited RPI requirements -- would require a legal Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 40

1

judgment.

2

get a lawyer involved or the client would have to

3

get a lawyer involved.

4

So, the patent agent would then have to

Many patent firms also outsource their

5

maintenance fee payments, as Courtenay pointed

6

out, so the procedure would require coordination

7

with a payment service to make sure that the

8

verification is made on time, and it would also

9

require additional docketing.

Many law firms

10

don't docket maintenance fee payments anymore,

11

because these payments are outsourced to the

12

services.

13

Again, even if the proposed requirement

14

of broad limited definitions is adopted,

15

information may not be available to the public as

16

needed.

17

eight, and twelve years after the patent issues.

18

There will be relatively large gaps in time when

19

there will be no duty to record the

20

real-party-in-interest or update the

21

real-party-in-interest.

22

hidden.

Maintenance fees are only due at four,

So, it could still be

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 41

I also believe that a determined RPE or

2

NPE, whatever system you can come up with, will be

3

able to game it and under the limited definition

4

put the patent in an entity under which it has no

5

control, however it's defined, but then can obtain

6

it when it's ready to file suit.

7

Determining the rights of a party under

8

a licensing agreement may be difficult, and they

9

may be subject to confidentiality agreements.

So,

10

it would be difficult for a patent practitioner,

11

even if he wanted to, to disclose this information

12

in those situations.

13

Finally, we think if the PTO is

14

determined that this is necessary, we recommend a

15

more focused procedure that we believe can produce

16

essentially the same results with a much lower

17

administrative burden.

18

we have the Rule 105, but we also think that

19

requiring the RPI information to be submitted only

20

at the payment of the issue fee or filing and

21

payment of the issue fee would be much less

22

burdensome than the concept need to update it.

For pending applications,

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 42

For issued patents, we believe one

2

possibility may be to develop a new procedure in

3

the Patent Office by which a member of the public

4

could anonymously ask the PTO to request RPI

5

information.

6

then put it into the file.

7

would have to be limited to prevent harassment and

8

also maybe with a fee to prevent harassment at the

9

Patent Office.

10

Then the PTO would request it and And this of course

I thank you very much.

We thank you

11

very much for the opportunity to bring these

12

issues to your attention.

13

DR. GRAHAM:

Thank you, thank you, Mr.

14

Nigon.

15

Wilder is from the U.S. Department of Justice,

16

Antitrust Division.

17

Our next speaker, Jeffrey Wilder.

MR. WILDER:

Thank you.

Mr.

So, I should

18

begin with a disclaimer, which is the views I

19

express here today are not purported to represent

20

those of the Antitrust Division.

21

said, I think it is fair to say that at the

22

Antitrust Division there is considerable

That having been

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 43

1

enthusiasm for consideration of new rules that

2

would require disclosure of real-party-in-interest

3

information.

4

Making information about the true

5

controlling owner of a patent available is likely

6

to improve the Notice function of our patent

7

system and promote competition and innovation to

8

the benefit of U.S. consumers by facilitating

9

bilateral licensing, increasing design freedom,

10 11

and allowing firms to better manage risk. At this point, let me take a step back

12

and talk a little bit about the benefits of

13

transparency to a well- functioning IP

14

marketplace, and I think the easiest way to

15

approach this is simply to set up two extremes, to

16

think about a world in which IP licensing works

17

very well and a world in which it does not.

18

And so consider the first world.

19

Technologies are well known; it's clear who owns

20

what; and also it's clear what all the options are

21

on the table.

22

licensee goes out, the licensee can weigh the

And therefore when a potential

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 44

1

relative technologies, consider the relative costs

2

of each, and decide which is the best route to go.

3

Now, if we consider instead a

4

marketplace in which licensing is not working

5

well, rights aren't going to be well defined,

6

technologies may not be well known, and it may be

7

incredibly difficult to know who precisely owns

8

what.

9

be basically forced to bring a product to market

And in a world like this, a licensee might

10

without pursuing any licensing options at all, and

11

what will ultimately happen, of course, is that

12

someday down the road after unrecoverable costs

13

have been sunk, the potential licensee should

14

expect a licensor to show up at his doorstep and

15

say, basically you've infringed our IP.

16

Now, it's well documented in a world

17

like that when the potential licensor is arriving

18

after these investments have been made that we

19

should expect to see very high royalties.

20

this ability of the licensor to hold up the

21

potential licensee is inherently a very

22

inefficient outcome from the perspective of

And

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

competition policy.

2

Now, you might say, look it's just a

3

transfer.

4

royalties I impose might change my marginal costs

5

to produce but also because anticipating how this

6

game is going to play out, I might choose, as a

7

potential firm looking to develop a new product,

8

simply not to develop the product at all in the

9

first place.

10

But in truth it's not, both because the

And that is a real, pronounced,

economic harm.

11

The rules being proposed or the rules

12

being considered, rather, by the USPTO improve

13

transparency by making clear who precisely owns

14

what.

15

problem?

16

certainly a step in the right direction, a step

17

toward greater transparency.

18

Page: 45

Now, are they going to solve the holdup By no means.

But in my view, they are

Now, there's one caveat that I should

19

note here, and that is in certain contexts it is

20

the case that transparency -- too much

21

transparency -- can actually reduce incentives to

22

invest in information, say, and I think that the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 46

1

context in which this tends to come up most often,

2

the canonical example, is financial markets.

3

context like that, are the institutional investors

4

of the world going to go out and make the

5

investments necessary to learn which stocks are

6

under- or over-valued unless ultimately they're

7

going to be able to trade on that information

8

before others trade in front of them.

9

context, there is an acknowledgment that we need

10

to basically weigh the two effects, and we allow

11

large firms to engage in block trades.

12

them to engage in anonymous trades to essentially

13

balance the two.

14

In a

In that

We allow

Now, I think similar arguments can be

15

made here, and I think they are theoretically

16

valid.

17

has arisen in the course of our investigations,

18

also our PAE workshop in December of the prior

19

year, I think that the weighing is pretty obvious,

20

or at least how the weighing comes out, and this

21

is a market that would benefit incrementally from

22

a move toward greater transparency.

However, based on my understanding that

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 47

Now, of course in order to increase

2

transparency, the rules need to have some bite.

3

They have to have some teeth.

4

want to have is a world in which the rules are put

5

in place and sophisticated entities can

6

essentially evade the rules by virtue of setting

7

up a vast web of subsidiaries and shells.

8

I revoke the rules that are being proposed here

9

today, they are both adequate in that respect.

And what we do not

And as

10

What I think I would say is, at a minimum as we

11

consider different rules it should be necessary --

12

in all cases we should require identification of

13

the ultimate parent entity.

14

Now, I would go even further and say

15

that there would be clear benefits to requiring

16

recordation with each change in the RPI.

17

gets back to comments made before.

18

ensure that the RPI data at hand at a particular

19

point in time were never stagnant.

20

And this

That would

Now, I'll conclude with just an

21

observation or two.

I've spoken a little bit

22

about the benefits of transparency on the whole, Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 48

1

but I'll make an observation or two that are more

2

specific to enforcement of the competition laws

3

and how rules of this sort would help us.

4

better information on RPI would allow us to better

5

identify the competitive impact of acquisitions,

6

because we would know exactly who owned what.

7

I think

And then I'll also flag that what we

8

oftentimes care about is somewhat broader than the

9

rules that are being suggested here.

So, what we

10

will occasionally care about is who stands to

11

benefit from the exercise of an IP right?

12

consider, for example, a situation where a

13

particular IP is asserted and an exclusion order

14

is sought.

15

competitor to the product against which the IP is

16

being asserted stands to benefit.

17

about that, especially if that competitor was the

18

source of the IP to begin with.

19

So,

Well, in an instance like that, a

And we care

To the extent that there's more

20

information about how IP travels from entity one,

21

to two, to three, that might make it harder for

22

firms to engage in strategies that are potentially Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 49

1

problematic that involve the sale of IP to be

2

asserted against a competitor and effectively

3

raise that competitor's costs.

4

Thank you.

5

DR. GRAHAM:

6

next speaker is Michael Lubitz.

7

from Global Technology Transfer Group.

8 9 10

MR. LUBITZ:

Thank you, Mr. Wilder.

Our

Michael comes

Good morning, everybody.

Thank you, Director Kappos for making this roundtable a reality.

11

You know, today I think really is about

12

change in that the patent marketplace has evolved

13

very, very quickly, and we really don't have laws

14

in place to support that marketplace and foster

15

its growth.

16

is what I would call an inflection point and an

17

attempt to modernize.

And so what we're really dealing with

18

Today one of the things that I want to

19

challenge everyone here is to think about what's

20

best for the marketplace over the long run.

21

for transparency.

22

But what about the nature of the assignment?

We're

We want to know who owns what. Was

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 50

1

it an asset transaction?

Was it the result of an

2

M&A deal?

3

kind of information and transparency will help us

4

understand the health of the patent marketplace.

5

The first item I want to talk about is

Is it just a security interest?

That

6

just a little background on us, because we're

7

really in the trenches here in dealing with the

8

transparency of information and trying to figure

9

out what happens in the marketplace.

And I can

10

tell you, it's a struggle.

11

GTT Group, was founded in '97, and we've always

12

been doing buy- and sell-side advisory, but

13

another important function for us is providing

14

information on the marketplace to the

15

participants.

16

So first, our firm,

In 2007 we started publication of a

17

quarterly report, which had a key indicator, and

18

continues to, called a patent market index, which

19

keys off of assignment-generated information.

20

when we saw the proposal from the USPTO we got

21

very excited, but we really wanted to see if we

22

could look at the information that's being

And

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 51

1

recorded, how it's being handled within the USPTO,

2

and is there any way to improve the qualitative

3

nature -- not just the nature of who the owner is

4

but what is actually happening.

5

The other thing that we just introduced

6

in 2012 was a patent ticker, which basically takes

7

information as it's published by the USPTO and

8

tries to determine transaction activity and inform

9

the marketplace, and it's a very difficult thing

10

to do given the present information that's being

11

provided to the USPTO.

12

we have are related to just how things are

13

recorded.

14

single asset transfer rather than recording them

15

as one.

16

understand the dynamics of what's happening in the

17

marketplace.

18

week there were maybe 148 different instances of

19

recordings by Honehigh, creating another company

20

called Golden Charm, and we're trying to simulate

21

that data and understand the nature of the deal.

22

And so one thing is maybe to take a step back and

Some of the problems that

Some entities love to just record every

And so it's very hard for us to really

I can't tell you, I mean, just this

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 52

1

think about how we require the recordings, why we

2

allow for the variance, and what is the best

3

practice.

4

marketplace.

5

So, we really can have an informed

The other thing that we are very

6

concerned about on the buy- and sell-sides is the

7

timing to make a report, to identify who the

8

real-party-in-interest is.

9

fluid in that they're multi-staged, and assets

Many transactions are

10

will go to different owners over a very relatively

11

short period of time.

12

upon maintenance windows, sometimes you really

13

don't know who the owner is.

14

items that are happening, like, for instance, DOJ

15

reveals certain transactions.

16

when, at what time?

17

some type of safe harbor or some (inaudible) a

18

time period that allows for ultimate compliance.

19

And if it's triggered based

And you have other

Who should record

Who really is the owner?

So,

It was mentioned earlier that they'd

20

like to see changes at every point in time, and a

21

lot of these deals are very structured so it would

22

probably be more realistic to wait till the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 53

1

transaction settles to record who the

2

real-party-in- interest is.

3

Today the real quest is for quality,

4

quality in the assets that are issued by the

5

USPTO, and that information provided to consumers

6

so they know what is actually happening.

7

in terms of this bigger picture, the real

8

challenge I think is not only to record who the

9

party is, the actual partying interest, but to

10

And so

think about the nature of the assignment.

11

And, finally, how quickly can we get

12

that information out?

What we've seen is a

13

backlog.

14

for a certain period of time, it always is growing

15

and growing.

16

there's any way that this process can be

17

modernized -- I don't know what happens within the

18

USPTO right now in terms of assignments and

19

whether that data is published on the fly or

20

whether it sits, but being able to provide that

21

information on a timely basis is critical to the

22

smooth functioning of markets.

So, if we look at assignment activity

Eventually it settles down, but if

And we don't have

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1 2 3 4

Page: 54

that right now. Thank you for letting me speak today, and good luck. DR. GRAHAM:

Thank you, Mr. Lubitz.

Our

5

next speaker is Fiona Scott Morton, and she comes

6

to us from Yale School of Management.

7

DR. SCOTT MORTON:

Good morning.

8

you, Director Kappos and Dr. Graham for the

9

invitation to speak today.

10

Thank

I'm a professor of economics at the Yale

11

School of Management, but I recently finished

12

serving as the economics deputy in the Antitrust

13

Division of the Department of Justice.

14

31st was my last day, so it's nice to be back in

15

Washington so soon.

December

16

I just should say while it's clear that

17

my experience at the Department of Justice shaped

18

my thinking on this issue and gave me some

19

insights and examples from behavior, I am now

20

giving my personal and scholarly opinion I fully

21

support the PTO's initiative to increase

22

transparency in this sector, and I just have a Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 55

1

couple of, actually, suggestions for improvements

2

in terms of what Mr. Nigon brought up with the gap

3

that would arise with infrequent recordation.

4

think that that's something that could be solved

5

by just requiring that each change in the

6

real-party-in-interest be recorded with the PTO,

7

which would allow the various efficiencies that

8

people have discussed to be available at all

9

times.

10

I

I also think that the definition of the

11

real-party- in-interest -- I will defer to the

12

lawyers for sort of what's legally important, but

13

in terms of the economics of what's important

14

there, you really want to be able to understand

15

who's financially going to benefit from exercise

16

of the rights of the patent.

17

there's a legal definition that says, Party A

18

shell company gets to decide when there's

19

litigation or gets to decide on a royalty but it's

20

really Party B that extracts all the money that's

21

earned from the patent, then we'd like to know

22

about Party B as well.

So, for example, if

So, that's an important

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 56

1

feature, I think, of a successful definition; the

2

financial gain from exercising that patent can't

3

be hidden.

4

One of the things that Jeff Wilder

5

talked about is the improvement in markets when

6

you have more transparency and you're available to

7

think about how to design your product and how to

8

license the technology you need because you know

9

what's out there and you know who owns it.

10

I think that there has been some

11

criticism of this.

By thinking about the software

12

industry, for example, there are so many broad,

13

duplicative, and vague software patents that we

14

don't really think people are going to say, oh,

15

I'm going to use this database to look up the one

16

person from whom I need a license for my widget,

17

okay?

18

it's a straw man in terms of the criticism.

19

think it's much more illuminating to use this

20

information to analyze which players are active,

21

rather, as IBM described.

22

licensed?

That's a little simplistic, and I think I

You know, are you

What's in the portfolio?

What's my

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 57

1

ability to license from this party?

2

competitor of mine?

3

that that's a huge efficiency that we would

4

imagine coming from this.

5

And so forth.

Are they a So, I think

I also think that the issues with

6

strategic use of these patents depend a great

7

deal, in some cases, on secrecy and that

8

transparency would remove some of the strategies

9

that we currently see used by both product

10

companies and trolls.

So, for example, why, given

11

the real disaster of this marketplace for ideas,

12

do we have the ability to produce widgets at all?

13

And it's partly because there's a system of broad

14

cross-licensing that goes on between large

15

companies.

16

to a cross-license at a price of zero, and that's

17

part of their general relationship in terms of

18

standards-setting organizations working together

19

on different products or projects, lobbying the

20

government.

21

of the long-term relationship between companies A

22

and B.

So, company A and company B will agree

You know, all those things are part

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 58

Well, suppose company A has a very

2

valuable patent that they'd really like to extract

3

a lot from?

4

cross-license with B, even though they know B

5

would pay a lot.

6

sell that patent to a third party for a lot of

7

money, and the third party can sue from B, because

8

they don't have a cross-license.

9

firm A can monetize its patents more profitably.

10

They can't, because they have a

So, the easy thing to do is to

And in that way,

Okay, now, you might ask, well, you

11

know, what's the problem with that?

12

patent.

13

long-term relationship with B, and B is going to

14

be upset when they discover that their money is

15

being extracted in this way.

16

upset, because they don't know where the patent

17

came from, and they don't know that it was really

18

firm A's patent that's causing them this trouble.

19

They own the

Well, the problem is that they have a

But they can't be

If you shed some sunshine in that

20

setting, if you have some transparency, B

21

understands that the patent used to belong to A;

22

now it's been sold to a troll, and it's being used Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 59

1

to attack them.

2

between A and B comes back into play just the way

3

it was before, right?

4

and B weren't suing each other; it's because they

5

had a lot of long-term relationships and projects,

6

and now they're going to be working together for

7

the foreseeable future and that discipline returns

8

when whatever A sells is known by B.

9

Then the whole relationship

There was a reason that A

Okay, and again I should emphasize that

10

I completely agree with what Jeff Wilder said

11

about issues with competitors.

12

important for antitrust agencies, for competition

13

enforcement agencies to be able to understand when

14

the product market is being impacted by strategies

15

around patents and enforcement of patents, because

16

those can harm competition in a way that consumers

17

lose from.

18

It's very

So, while I won't go through the

19

arguments in favor of keeping secrecy, which Jeff

20

also alluded to, I think that the balance is clear

21

in this sector that we have really a lack of

22

information, and that's holding back efficient Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 60

1

transactions, and I think consumers would benefit

2

and innovation would benefit from more

3

transparency over patent ownership.

4

Thank you very much.

5

DR. GRAHAM:

6

Morton.

7

Wamsley.

8 9

Thank you, Dr. Scott

Next on our list of participants, Herbert

Herbert's here from the Intellectual Property Owners Association.

10

MR. WAMSLEY:

Well, thank you.

I

11

appreciate the opportunity to be here this morning

12

on behalf of IPO, which is a trade association

13

representing companies and individuals in diverse

14

industries and fields of technology.

15

include people who own intellectual property

16

rights and others who are interested in the

17

rights.

18

and more than 12,000 individuals who are involved

19

in the Association through their companies or law

20

firms or as individual members.

21 22

Our members

We have more than 200 member companies

Now, ten minutes is a short time to address a big topic, and I sympathize with those Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 61

1

after the break who apparently only have five

2

minutes.

3

preliminary comments on behalf of IPO, and we do

4

plan to file more detailed written comments at the

5

end of the month after our diverse 50-member board

6

of directors meets to review this.

7

But I would like to make some

We do tend to believe that more

8

information would be useful about RPIs than is

9

available today.

And we would tend to favor the

10

second definition of RPIs in the Federal Register

11

Notice, which includes disclosing the highest

12

level parent.

13

emphasize the long list of burdens that disclosing

14

this information will place on practitioners and

15

companies and law firms, those down in the

16

trenches.

17

Nigon of the AIPLA said, but I believe that he

18

identified a number of significant burdens that

19

need to be fully explored and understood before

20

moving forth with the proposal.

But having said that, I want to

I don't want to duplicate what Ken

21

It's also important to understand that

22

different companies operate in different ways in Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 62

1

recording the ownership of their patents.

2

large companies and IPOs get all of the patents in

3

the name of the parent, but we have other

4

companies that have patents assigned to dozens of

5

subsidiaries for legitimate business reasons, and

6

keeping track of and periodically updating this

7

information is more burdensome for the latter type

8

of company.

9

Some

I think that looking at how this would

10

work, we would not favor requiring additional

11

statements about RPI information where there's

12

been no material change.

13

needs to be given to what the penalty for failure

14

to comply with identifying RPI information would

15

be.

16

that would lead to charges of inequitable conduct

17

in this area.

18

I think more attention

We need to be careful not to have a system

Now, another point beyond the burdens --

19

we shouldn't automatically dismiss the legitimate

20

business interests in protecting the confidential

21

nature of ownership and licensing information.

22

But every company is interested in participating Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 63

1

in the marketplace of licensing.

2

applicants may not want competitors to know

3

whether an application has been licensed or to

4

whom.

5

Patent

We could go so far with transparency in

6

eliminating confidentiality of ownership

7

information that we could discourage patenting and

8

innovation.

9

the competitors of the owners can do to help make

10

I think we need to keep in mind what

the system operate well.

11

There's a lot of concern today, of

12

course, about the amount and cost of litigation.

13

But according to the information we have, in many

14

industries very few product clearances are being

15

done today, and not all companies have a policy of

16

not infringing patents that appear to be valid.

17

I think it's also important to

18

understand -- to emphasize that a fair amount of

19

RPI information already is available.

20

into court, you have to disclose the ultimate

21

parent, and I believe that's true at the PTAB as

22

well.

When you go

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 64

Finally, I would say that in any event

2

the Patent and Trademark Office should investigate

3

further whether it has the authority to require

4

the patent ownership information before it moves

5

ahead with the proposal.

6

make recording of assignments optional, and it

7

prescribes the harm you will suffer if you don't

8

record the assignment within a certain time;

9

namely, you won't have rights against a subsequent

35 U.S.C. 261 seems to

10

purchaser without notice.

11

squared with the idea that the PTO can require RPI

12

information in every case?

13

Can that statute be

Well, thank you again for going into

14

this topic.

As I say, more RPI information should

15

be available, but it's got to be done in a way

16

that holds down the burden and expense.

17

Thank you.

18

DR. GRAHAM:

Thank you, Mr. Wamsley.

19

Our next speaker on the agenda is Lisa Marks

20

McIntye, and Ms. McIntye comes from Google.

21 22

MS. McINTYE:

Thank you to the U.S.

Patent Office, Dr. Graham, and Director Kappos for Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

allowing me to address this important issue today.

2

Google supports the PTO's proposal to

3

require identification of the

4

real-party-in-interest.

5

function of the patent system is served by

6

disclosure of what a patent covers, who owns it,

7

and the identity of the real-party-in-interest,

8

that is, the identity of the true owner of those

9

patent rights.

The public notice

Transparency in patent ownership

10

and real-party-in-interest information is, we

11

believe, a critical aspect of the public notice

12

function.

13

Page: 65

For purposes of my brief comments today,

14

I will refer to patent ownership broadly as

15

including essentially both the proposed broad and

16

narrow definitions of real-party- in-interest.

17

So, when I refer to patent ownership, I'm

18

referring to both ownership and the

19

real-party-in-interest information, or the

20

ultimate parent, because both categories are

21

necessary to support a well-functioning patent

22

system that promotes innovation. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 66

The Patent Office has correctly

2

recognized the lack of transparency in patent

3

ownership burdens, rights clearing, and simple

4

licensing.

5

market entry endeavors, such as freedom-to-operate

6

activity.

7

It also burdens other forms of free-

Large multi-national companies, like

8

Google, spend billions of dollars each year

9

funding research to support the innovation

10

necessary to bring great products to consumers.

11

We evaluate various market dynamics, including

12

patent ownership, to minimize legal and business

13

risks as our business expands into new areas.

14

Accurate ownership information is

15

integral to clearing patent rights and assessing

16

risk from a family of patents or a specific

17

patentee.

18

needed to make decisions about who to seek a

19

license from or with whom to collaborate.

20

example, if an existing market participant owns

21

patents that are closely related to and/or may be

22

complementary to technologies that Google is

Accurate ownership information is also

For

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 67

1

evaluating, ownership information about those

2

patent assets may lead to a decision to partner

3

with the assignee of record or seek a license from

4

that party.

5

inaccurate ownership information could lead to a

6

decision to, say, avoid market entry or to enter

7

an already patented market and risk unexpected

8

license costs or infringement liability.

9

On the other hand, incomplete or

In-house patent departments conduct

10

these types of strategic analyses to ensure

11

freedom to operate the technologies and products

12

developed by their companies.

13

licensing typically addresses specific patents

14

covering particular products, corporations

15

frequently engage in more comprehensive

16

cross-licensing to ensure patent peace.

17

peace between parties is not possible without

18

knowing what patents each party controls and may

19

later then assert or cause to be asserted against

20

the other.

21 22

While simple

Patent

The PTO's proposal also supports the public's ability to initiate pre- and Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 68

1

post-issuance proceedings under the Leahy-Smith

2

America Invents Act, including, specifically,

3

post-grant review, inter partes review, and

4

pre-issuance submissions.

5

To pursue a petition or submission under

6

the AIA proceedings, a party must disclose public

7

use, sales, offers to sell, and other prior art

8

under 35 U.S.C. § 102(a)(1).

9

difficult when the patent owner is unknown,

This is far more

10

because merely knowing a patent or publication

11

exists without knowing the owner is not enough for

12

a sufficient assessment of the business risks or

13

rewards of filing a petition or making a

14

submission.

15

the strict timing limits of post-grant review

16

petitions and pre-issuance submissions.

17

These difficulties are exacerbated by

In addition, actions may be initiated

18

against a prior owner who, for example, may no

19

longer have interest in the asset, and that

20

results in wasted time and resources of both the

21

patent owner and the U.S. Patent and Trademark

22

Office. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 69

Transparency in ownership of patents

2

will lead to efficiencies in litigation as well.

3

It will lead to reduced discovery costs associated

4

with identifying ownership interests of patents in

5

suit and also patents put forth as prior art.

6

this point, the rising tide of non-practicing

7

entity litigation and the difficulty of

8

identifying the real- party-in-interest in those

9

cases also supports the need for greater

10 11

To

transparency in ownership requirements. Further, litigants cannot know whether

12

settling will buy peace for their products without

13

knowing that they are settling with the

14

real-party-in-interest and also having information

15

and being able to determine the extent of the

16

real-party-in-interest portfolio.

17

proposal ensures that such information will be

18

available to inform settlements decisions and thus

19

promote true settlement between parties.

20

The PTO

It is unfair for patent holders to hold

21

their patents in secret and preserve the element

22

of surprise for their assertion campaigns or to Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 70

1

otherwise insulate their patents from

2

reexamination or post-grant review challenges.

3

The PTO's proposal helps level this playing field.

4

There are currently over 2.1 million

5

enforceable U.S. patents.

Rights clearing,

6

licensing, agency proceedings, and litigation

7

regarding these millions of enforceable patents

8

and the future millions that will replace them

9

require robust knowledge of who owns what patents

10

if the system is to work efficiently and best

11

promote progress of science and the useful arts.

12

The PTO has also recognized that

13

requiring greater transparency in ownership will

14

come with some costs.

15

costs appropriately by requiring real-party-

16

in-interest information only when applicants or

17

assignees are otherwise required to have

18

substantial interaction with the Patent and

19

Trademark Office.

20

But it has limited these

In conclusion, the PTO's proposal

21

addresses the concerns caused by lack of

22

transparency in ownership in the patent system, Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 71

1

and implementation of the proposal will improve

2

efficiency in PTO proceedings, litigation,

3

licensing, and patent examination.

4

Thank you.

5

DR. GRAHAM:

That concludes my remarks. Thank you Ms. McIntye.

6

Next on the agenda is a replacement.

7

Unfortunately one of the speakers is indisposed

8

today, and so from Schwegman, Lundberg & Woessner

9

speaking today is Kevin Greenleaf.

10

Kevin?

11

MR. GREENLEAF:

Thank you all for

12

allowing me to speak today.

I've been really

13

impressed and interested in everybody's comments,

14

particularly regarding the APA discussion and

15

whether the Patent Office has the authority to

16

make rules requiring people to identify the

17

real-party-in- interest, and I agree with Mr.

18

Wamsley's comment that 261 defines the penalty for

19

not disclosing the real-party-in- interest, or the

20

assignee in that case, as not being able to

21

enforce rights against subsequent purchasers for

22

value. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 72

1

I don't really see any other penalty

2

that Congress gives the U.S. Patent Office the

3

authority to make other than the fact that I think

4

we need this information.

5

practice involves post-grant proceedings, and I'm

6

concerned when advising clients and reviewing

7

prior art in preparation for a post-grant petition

8

whether the prior art that I'm looking at wouldn't

9

be applicable to a particular patent due to a

10 11

And a large part of my

102(b)(2)(C) exception to the prior art. So, another concern that I have is we're

12

primarily focused today on identifying the

13

real-party-in-interest from the patent owner

14

perspective.

15

the MPEP provide many other definitions for what a

16

real-party-in-interest is.

17

least seven different contexts in which the

18

real-party-in-interest is identified or required

19

to be identified, and first off 102(b)(2)(C),

20

which we've all been discussing today; second of

21

all, at issuance, § 118 under the AIA uses the

22

term "real- party-in-interest," that the patent

However, the rules, the statutes,

So, I've identified at

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 73

1

must issue to the real- party-in-interest.

2

that the same as 102(b)(2)(C)?

3

but we'll get to that.

4

Is

I think probably,

And then again after issuance we need to

5

know the real-party-in-interest for, as I said,

6

102(b)(2)(C) purposes for preparing post-grant

7

petitions, and then for the other reasons people

8

have identified, such as licensing and market

9

fluidity.

10

Fourth, the MPEP and the PTAB require

11

that the real- party-in-interest be identified

12

both for the appellant in ex parte and inter

13

partes appeals.

14

Fifth, in inter partes appeals, the

15

respondent needs to identify the

16

real-party-in-interest.

17

And then sixth, the rules -- CFR 42.8

18

requires the identification of the

19

real-party-in-interest from the patent owner and

20

as mandatory notices after post-grant petition has

21

been filed.

22

And, seventh, the petitioners need to Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 74

1

identify themselves in the post-grant petition

2

when they file one.

3

So, is there one definition that can

4

satisfy these at least seven different instances

5

of identifying the real- party-in-interest?

6

don't think so.

7

definitions that I've identified for

8

real-party-in-interest, the first of which is the

9

person under 102(b)(2)(C).

I

There are at least five

Secondly is under 118

10

you have a real-party-in-interest.

11

§ 1205, defines a real-party-in-interest for

12

purposes of appeal.

13

definition is 37 CFR 42.8, which I mentioned, is

14

the requirement for parties to an inter partes

15

proceeding to identify themselves as the

16

real-party-in- interest in a proceeding.

17

finally there's a common law definition, which the

18

Office in its practice guides is not satisfactory

19

for purposes of Patent Office proceedings.

20

And the MEPE,

And then the fourth

And then

So, which of these five definitions

21

applies to the seven different categories?

I

22

think perhaps we could combine 102(b)(2)(C) and Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 75

1

118 to be the person and the real-party-in-

2

interest being the same thing.

3

terms, but perhaps they mean the same thing.

4

After issuance I think, also, perhaps that would

5

be the same definition, because the reason we need

6

to know the assignee after issuance is for

7

102(b)(2)(C) purposes for valuing prior art in

8

preparation for filing a post-grant petition,

9

because if the assignee changes after the patent

They are different

10

issues and that assignee files another patent

11

application, then the patent that issued

12

previously would not be prior art to that new

13

application.

14

And then we have appellants.

So, the

15

justification for asking for the

16

real-party-in-interest at appeal is the Board

17

needs to know whether there's a conflict of

18

interest.

19

for the first three instances would apply to

20

appellants, and the same would hold true for

21

respondents and inter partes proceedings and the

22

patent owner at post-grant review.

So, I don't know that the definition

I think those

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 76

1

three should have a third definition, probably a

2

definition geared toward notifying the Board

3

whether there might be a conflict.

4

And then the seventh instance in which

5

the Patent Office requires real-party-in-interest

6

information is when the petitioner files a

7

petition, post-grant petition et cetera.

8

that instance, we need to know who the

9

real-party-in- interest is for purposes of

And in

10

estoppel, whether that party is estopped from

11

filing that petition or in order to enforce

12

estoppel later on after the trial concludes.

13

I think that would be a third definition.

14

So,

But then another problem occurs, because

15

the patent owner in a post-grant proceeding also

16

faces estoppel.

17

claims that were substantially similar to the

18

claims that were finally rejected in the post-

19

grant proceeding.

So, I think six and seven are

20

somewhat related.

But I think the patent owner

21

and the petitioner are somewhat related, but I

22

think the patent owner is more applicable to the

He's not allowed to apply for

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

appeal definition.

2

Page: 77

So, it's all very confusing.

But my recommendation is that to avoid

3

muddying the waters by vaguely defining what a

4

real-party-in-interest is for one purpose and

5

whether that definition applies for other

6

purposes, I think we should clearly separate the

7

three:

8

at issuance and after issuance -- that would be

9

one real-party-in-interest; purposes of appeal to

10

avoid conflicts with the Board -- that would be a

11

second definition; and then, a third definition

12

would be for petitioners for post-grant

13

proceedings for application of estoppel when that

14

becomes necessary.

15

Whether a person for 102(b)(2)(C) purposes

So, I hope that the suggestion helps

16

you, and I feel for your problem, and I think it's

17

going to be difficult to solve.

18

luck.

19

DR. GRAHAM:

So, I wish you

Thank you, Mr. Greenleaf.

20

Our last speaker is arriving by telephone, and

21

since we're running a little bit early I want to

22

see if she's actually called in. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

MS. CHIEN:

2

DR. GRAHAM:

Page: 78

Hi, Dr. Graham. Colleen Chien is here.

3

Hello, Professor Chien.

4

joining us from Santa Clara University School of

5

Law.

6

MS. CHIEN:

Professor Chien is

Thanks, Dr. Graham.

I'm

7

really honored to present today.

I commend the

8

PTO and Director Kappos and Dr. Graham for their

9

leadership and real willingness to listen as well

10

as engage in these really important issues.

11

bravo, PTO.

12

So

Because I am doing this presentation

13

over a phone conference -- you can't see me -- I'm

14

going to take a bit of an unconventional approach

15

(inaudible) is what I'm trying to say, so please

16

bear with me.

17

Okay, here we go.

I'm going to read you

18

a line from a patent that I picked out.

Here we

19

go.

20

Let me repeat that in case you didn't get it the

21

first time.

22

wi x.25."

"A key formula is distancet = sigma wi x.25."

"A key formula is distancet = sigma Okay, what the heck am I talking about?

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 79

1

Before the PTO cuts my line off, let me offer some

2

additional context.

3

This key formula is in a patent in which

4

one of the inventors is Tim Westergren.

Now, if

5

you're a music lover, you might be familiar with

6

his work.

7

the patent you see it's been issued to a company

8

called Pandora, which now I think probably more of

9

us are familiar with.

If you've looked on the front page of

Now you might have a hunch

10

of what this patent is, right?

11

mapping algorithm set Pandora patented back in

12

2002.

13

It's the music

So, if I'm a company that's either

14

(inaudible) or wants to be, this patent could be

15

super critical for understanding liability to

16

compete and be in this space.

17

owned by Pandora, one of the most successful

18

online music companies, it's just important as the

19

(inaudible) I was saying before, the formula

20

itself.

21

the context about who actually owns this patent,

22

the information itself is useless.

The fact that it's

With that bit of context, I would argue,

With, though,

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 80

1

the context of Pandora being the owner, I get

2

information that can help me at least do things if

3

I'm a user looking for information.

4

One, if I'm a competitor and I'm

5

interested in making sure that I can manage risk,

6

knowing that Pandora has these rights in this

7

algorithm puts me on notice, lets me know that I

8

need to be careful not to tread on it.

9

But, secondly, as a tool of technology

10

transfer, which I think is one of the best and

11

highest uses of the patent system, this

12

information could be critical.

13

startup in this space and I want to reverse

14

engineer what others have done.

15

at what they've done, and I want to know what

16

Pandora has done.

17

Let's say I'm a

I'm going to look

There are two messages here.

Thank you

18

for bearing with my initial introduction here that

19

I want to relay.

20

is as important as content, which is known in

21

many, many fields.

22

that if I don't know who owns this patent, it

But first we've got onset, which

In the patent area, it seems

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 81

1

doesn't mean as much to me.

2

patents out there.

3

different music algorithms.

4

most interested in are connected to real companies

5

that I can also look at, I can test out; and

6

having that additional bit of information does

7

make that much more interesting.

8

There are tons of

There are probably tons on But the ones that I'm

Secondly, there are a lot of different

9

reasons to look at patents, and I believe that the

10

(inaudible) administration has done a great job in

11

thinking about all the "customers of patent

12

information." Here it talked about patents as a

13

tool of transfer for a startup but also one as

14

defensive -- a rule of -- source of the best

15

information I can use strategically.

16

think about our different consumers and customers

17

of patent information, we want to keep this in

18

mind.

19

And as we

So, what does any of this have to do

20

with real- party-in-interest?

Let's go back to

21

hypotheticals.

22

assigned to Pandora and I searched for Pandora and

Say that the initial patent was

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 82

1

I found it, but by searching by Pandora I also

2

missed a bunch of patents assigned to the Music

3

Genome Project.

4

that was a (inaudible) to it.

5

bunch of patents assigned to, let's say, Music,

6

LLP, which Pandora acquired later on, let's say.

7

In an earlier version of Pandora, And I also missed a

Now, the genius of what the PTO has

8

suggested through the RPI rules is that because

9

Pandora -- the company now has rights to all these

10

patents, I should be able to find them all through

11

a search for RPI even though I would have missed

12

them through a search of unpaid assignee or

13

potentially even subsequent recordable assignee

14

information.

15

recorded in a slightly different name, Pandora

16

Inc. versus (inaudible), et. cetera.

17

Had they not been recorded or been

Now, these are things that experienced

18

searchers can overcome easily.

But if we want to

19

make the patent system accessible to everyone, we

20

want to make it easy for these because these types

21

of searches to yield the right information.

22

what I've said so far is that I've got context

So,

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 83

1

that's really important in real-party-in-interest

2

(inaudible) crucial part of this context.

3

think the key contribution -- a lot of people have

4

talked about different types of (inaudible) and

5

patent holders, but what I think is mechanically

6

very important about real-party-in-interest is

7

(inaudible) of aggregate subsidiaries and

8

affiliates and group them by a common real-

9

party-in-interest.

10

And I

And for anyone who's been in the

11

trenches, and many folks have already testified

12

that are, you now know what a huge problem in

13

patent law (inaudible) what I call the subsidiary

14

matching problem is, which is to say that IBM has

15

hundreds, maybe even thousands of different names

16

in the PTO recordation database.

17

referred to.

18

And this is true of most large companies, and as

19

we become an information economy where there's a

20

lot of transfer of information and changes,

21

different regions to record entities and just

22

(inaudible) to different entities, you have a lot

It's been

It's has kinds of different series.

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 84

1

of different subsidiaries that don't all kind of

2

tie back to the same parent.

3

So, I like this ultimate parent

4

authority that's (inaudible), because, for

5

example, if competitor y wants to know what

6

competitor X has, (inaudible) referred to earlier

7

by the companies, they can do so by searching the

8

real-party-in-interest, this ultimate authority

9

that has the power.

10

Now, for RPI to do this ultimately, this

11

problem really has to catch front and center.

12

when you actually execute it, RPI should be

13

(inaudible) unique identifier, like a dropdown

14

menu with that identifier rather than a text box

15

that allows some spelling (inaudible) must be

16

used.

17

So,

The question of broad versus limited RPI

18

-- I think those eventually could, if implemented

19

correctly, accomplish what I've been talking

20

about.

21

both broad RPI scenario and licensees as well, but

22

even to get RPI in a limited form would also be

It would also be very helpful in terms of

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 85

tremendously useful.

2

Okay, so I want to talk about the

3

benefits so far but not at all about cost, and I

4

think it is important, as Professor Rai reminded

5

us, in a number of testimonial (inaudible) to

6

compare and balance these benefits and costs.

7

And when you read through the

8

submissions from the 2011 ROC that Dr. Graham

9

referred to in his opening remarks, what you see

10

is something interesting, which is that as today,

11

the companies tended to favor the (inaudible)

12

disclosure all but once reported it, but the

13

lawyer groups and law firms -- because the lawyer

14

groups and law firms tended to disfavor the

15

proposal as burdensome.

16

Now, why did the companies like it?

In

17

short, because it would make their jobs easier.

18

There's not really a downside but only an upside.

19

It makes it easier to make products and goods,

20

understand competitors; and it makes their jobs

21

easier.

22

Now, why did the lawyers not like it? Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 86

1

Because it would make their jobs harder.

They

2

don't get any of the benefits of greater

3

availability of information, but they only have to

4

bear the risk in a downsize.

5

costs, complications, and a potential liability if

6

they don't record or provide information

7

accurately.

8

they've got to learn corporate law.

9

things they talked about earlier by (inaudible).

10

So, my suggestion with respect to this

There are increased

They've got to go chase it down; One of the

11

is that if the companies want this information,

12

and they are getting the benefits, then they

13

should actually pay for them as well.

14

should be the ones responsible for providing the

15

information to their lawyers, determining who the

16

real RPI is, making that call, and making the

17

companies responsible for the information that's

18

incorrect, not their patent lawyers.

19

So, they

If we can potentially shift the risk in

20

a downsize associated with this new requirement

21

and reduce the burden from this, I think that that

22

would be helpful. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 87

I want to make one final suggestion,

2

which is a little bit outside the scope of this

3

discussion today, which is going back to the

4

comments that context is an important as content

5

-- excuse me, context, which is as important as

6

content.

7

does not go forward on RPI information, it has a

8

lot of rich context information it already had,

9

and only that ownership of security interest or

Even for whatever reason -- if the PTO

10

citations, et cetera, whether or not patents are

11

maintained.

12

should be more readily exposed in the PTO

13

(inaudible) 2011 ROC make that point.

14

company is worried about risk management, it

15

should be possible to search among expired patents

16

only or non-expired ones to figure out what its

17

exposure is.

18

through and look up the maintenance fee records to

19

see what's in force or not.

20

commercial providers also give us information, but

21

startups can't afford this and they should have

22

access to this information as well.

I believe this context information

So, if a

It shouldn't have to kind of sort

And I know that

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 88

I also echo the comments of Michael

2

Lubitz as someone who has been in the trenches and

3

(inaudible) to find records, and to normalize the

4

recordation procedure would provide a lot of

5

benefits.

6

checkboxes you can check for what your conveyance

7

is actually doing.

8

checkboxes.

9

we should standardize the information that's been

So, right now there are a number of

But there should be more

There should be no other form.

10

processed in automated way.

11

to do so right now.

12

And

It's very difficult

In short, I support and applaud the

13

PTO's efforts in this area and am excited to see

14

how it goes forward.

15

Thank you very much.

16

DR. GRAHAM:

Thank you Professor Chien.

17

So, we've reached the point where we are going to

18

take a break, after which we'll hear from more

19

interested parties.

20

Blackberry.

21

back here at 10:37.

22

If is now 10:22 on my

Let's take 15 minutes, so let's be

(Recess) Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

DR. GRAHAM:

Page: 89

Thanks, thank you for

2

rejoining us for the real-party-in-interest

3

roundtable here at the USPTO.

4

will be Matthew Rappaport from IP Checkups.

5

Our next speaker

For the next series of people we had

6

scheduled five minutes, but because we're running

7

a bit ahead of schedule I think we can be a little

8

bit flexible with that.

9

Matthew and the other folks is at five minutes, I

10

So, what I'll do for

will raise the one-minute warning.

11

So, Matthew, please.

12

MR. RAPPAPORT:

Just wanted to thank Dr.

13

Graham and Director Kappos for inviting me to

14

speak here today.

15

It's a pleasure to be here.

I believe we're included in

16

god-multinous discussion fairly recently.

17

company, IP Checkups, is a boutique patent

18

analytic firm.

19

landscape analysis and patent strategy services to

20

all kinds of different customers and clients and

21

patent holders.

22

My

We provide competitive patent

One of the things that we did in October Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 90

1

was we went out to try to create more transparency

2

based on requests from our clients.

3

have a number of clients who have said to us over

4

the years:

5

providing us information on who the big companies

6

are in this particular patent landscape; you're

7

able to provide us information on who the small

8

companies are and the startups; and you're able to

9

provide us information on the individual inventors

In fact, we

You know, you've done a great job of

10

and the research institutions and the

11

universities.

12

is this whole list of companies that we can't

13

identify.

14

a name; we go to a website; there's nothing there.

15

We see that they own patents.

16

diverse or broad their portfolio is within each of

17

these independent shell companies.

18

started to ask us, well, how do we identify these

19

things?

20

realized that it was nearly impossible, in many

21

cases, to find anything more than a website that

22

leads to the Delaware LLC website, which leads to

But one area that we're stuck with

We don't know who they are.

They have

We don't know how

And so they

Well, we started to do the research and

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 91

1

some information that's very difficult to track

2

down to the ultimate parent or the ultimate parent

3

or the ultimate party of interest.

4

So, we started asking our clients:

5

Would you be willing to fund an effort to go out

6

and uncover who these folks are who actually own

7

these assets?

8

small set of patents or for a small area that

9

we're focused on, but in aggregate we're not

10 11

And the answer was:

Well, for a

really interested. At which point we came across with an

12

idea that we ought to go out and try to crowd-fund

13

this effort and try to engage the IP community,

14

the technical community, as well as the general

15

community through a crowd-funding website called

16

Indiegogo to try to raise $80,000, which we

17

thought was a reasonable amount of money to go out

18

and uncover this data and publish it for free on

19

the website -- excuse me, on the World Wide Web.

20

So, we were not actually ultimately

21

successful with raising $80,000.

We had a lot of

22

interest and a lot of people talked to us about Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

how interested they were in seeing this

2

information.

3

money on the table to do it, very few people were

4

willing to do that.

5

Page: 92

But when it came time to putting

However, we have gone forward with our

6

effort.

We've hired an intern to help us, and

7

we've gotten a lot of interest from some law

8

school students from various law schools to

9

participate in this process, and we are actually

10

going through the process of trying to uncover

11

these entities, and we will be making the

12

information available publicly on the World Wide

13

Web.

14

Bay Area has recently released a set of 2,000

15

shell companies that are allegedly associated with

16

intellectual ventures, which is currently publicly

17

available.

18

In the meantime, another organization in the

We believe that this is a very important

19

issue, and we think that the main reasons behind

20

that are due to the benefactors of

21

non-transparency versus the benefactors of

22

transparency.

And we believe that, in fact,

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 93

1

benefactors of non-transparency are typically

2

folks who are well-heeled and have access to a lot

3

of resources; and they thrive in an inefficient

4

and uncertain marketplace.

5

It makes it extremely difficult for

6

startups and small companies and folks that are

7

just trying to go about their business if you

8

identify a patent of interest or a patent that

9

you'd like to license and you realize that there's

10

nobody that you can contact at that organization

11

or at that shell company to actually go forward

12

with the license.

13

ultimate party of interest has no interest in

14

licensing the technology, which is fine, but at a

15

minimum we believe that they should have to

16

disclose who they are to the public.

17

right -- a patent is a right that's granted by the

18

United States government, and a requirement should

19

be implicitly there to require these individuals

20

that apply for these patents to publish that

21

information for the public.

22

And that may be because the

This is a

The main benefactors that we see of Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 94

1

non-transparency are the non-practicing entities,

2

specifically, the PAEs that are creating the

3

subsidiaries and shells.

4

increase in the threat of litigation and

5

litigation itself stems from these issues.

6

also believe that large operating companies are

7

now starting to create shells, and we're seeing a

8

lot of that activity more recently where big

9

companies are out there with the shell company

10

We think that the

We

development and going after these same targets.

11

From the benefactor perspective, we

12

certainly see that universities and research

13

institutions and startups and small companies will

14

benefit tremendously from transparency, but we

15

also see that those same entities, such as MPEs

16

and PAEs and large operating companies, will also

17

benefit from those rights that are now available

18

publicly that people can see.

19

increase the ability for these organizations to

20

license these assets and for other folks to access

21

them.

22

We think it will

As to some of the other comments about Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 95

1

recordation, we would agree that the idea of

2

recording with each change in RPI makes a lot of

3

sense.

4

to that.

And I think I'm going to limit my comments

5

Thank you.

6

DR. GRAHAM:

Thank you very much.

7

speaker is Scott Pojunas.

8

Hewlett Packard.

9

MR. POJUNAS:

Next

Scott comes from

So, good morning,

10

everyone.

11

director with HP, so I head up our efforts for HP

12

software.

13

I'm currently a patent development

So, I'm pleased to be here today to

14

share HP's support for the PTO's efforts to

15

require greater transparency of patent ownership,

16

and I thank the PTO for the opportunity to be here

17

today.

18 19 20

I wanted to start off by giving a bit of context on HP's portfolio. So, we currently have well over 20,000

21

granted U.S.

22

Applications.

Patents and over 7,000 pending U.S. So, we're a pretty significant

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

stakeholder in the patent system, and we really

2

have a significant interest in ensuring that the

3

system functions as effectively as it possibly

4

can.

5

to require the submission of information

6

identifying the real-party-in-interest at key

7

points during the life of the patent.

Page: 96

As a result, we fully support the proposal

8

And I think, as the Supreme Court has

9

stated, a patent by its very nature is affected

10

with a public interest.

In view of this, we think

11

it's reasonable for the PTO and for the public to

12

expect a party to disclose its identity as part of

13

the quid pro quo for obtaining or owning a patent.

14

In addition, many of the other panelists

15

have spoken to various benefits of this proposal,

16

and we fully agree with those, including increased

17

economic efficiency in the marketplace; enabling

18

innovators to more effectively manage risk; and

19

also benefits to the USPTO during examination and

20

post-grant proceedings.

21 22

So, in terms of the mechanics of a potential rule, we believe that the submission Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 97

1

should include an identification of both the

2

current legal title holder and the

3

real-party-in-interest where the

4

real-party-in-interest is defined as the ultimate

5

parent or highest-level parent in the corporate

6

structure.

7

to be a pretty straightforward question that will

8

be easily determined in the large majority of

9

cases.

10

In our view, this is typically going

In terms of the timing of collection of

11

information, we think it's important that the

12

information should be submitted relatively

13

frequently to ensure that the information is

14

current and is really serving the purposes that

15

we've spoken about today.

16

The real-party-in-interest information

17

can be submitted with minimal cost at key

18

checkpoints during the life of a patent:

19

ownership is often examined and when the

20

information can be provided in conjunction with

21

other submissions.

22

at least four checkpoints during the life of a

When

So, we believe that there are

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 98

1

patent in which this information could be

2

submitted.

3

First of all, at application filing

4

ownership is obviously a key question.

5

going to be obtaining assignments from the

6

vendors, and under the new rules you need to

7

determine whether the applicant will be the

8

inventors or an assignee.

9

You're

Secondly, at patent grant typically

10

ownership would be confirmed prior to payment of

11

the issue fee, and the real- party-in-interest

12

information could be provided concurrently with

13

the issue fee payment.

14

Third, when ownership changes, really

15

regardless of the size of the transaction, a party

16

is going to be aware of what assets they require.

17

They're going to know what the new owner is.

18

in many cases, they're going to be filing a new

19

power of attorney that would be filed in any case,

20

and the real-party-in-interest information could

21

be provided concurrently without power of

22

attorney.

And

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 99

And then, finally, payment of

2

maintenance fees.

3

be submitted at that point.

4

going to pay maintenance fees for patents it owns,

5

and in our view it wouldn't require a whole lot of

6

effort to confirm ownership at the time of payment

7

of each maintenance fee.

8 9

We think the information should The party is only

One item we'd like to emphasize here is that HP will feel any burdens imposed by the

10

requirements of any potential rule in proportion

11

to the size of our portfolio, which, as I

12

mentioned at the outset, is quite large.

13

addition, there are situations where we may have

14

patents in subsidiaries for legitimate reasons.

15

That being said, we think it's, as I mentioned,

16

pretty straightforward to provide this

17

information, and we ultimately feel that the cost

18

of complying with these requirements are, without

19

a doubt, justified by the benefits.

20

In

In any event, to the extent that there

21

are difficulties in gathering this information in

22

exceptional cases or fringe cases, these can be Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 100

1

addressed with flexibility and leniency in the

2

rules that are ultimately passed provided, of

3

course, that any potential loopholes are avoided.

4

But that could all be borne out in the rulemaking

5

process.

6

So, one example is that an unavoidable

7

or unintentional standard could be adapted to this

8

situation to excuse delays in providing the

9

information when for some reason it wasn't

10

possible to gather it.

11

exceptional cases could be, as I mentioned,

12

identified and addressed in the ultimate rules

13

that are passed.

14

And, really, any other

So, ultimately, HP believes that

15

ownership transparency is a really critical

16

characteristic of an optimal patent system, and we

17

think that implementing the proposal would provide

18

benefits to the public, the USPTO, and to key

19

stakeholders of the patent system.

20

forward, we hope to have the opportunity to

21

collaborate with the USPTO to develop rules that

22

make this really important initiative a reality.

So, going

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 101

1

So, thank you very much.

2

DR. GRAHAM:

Thank you, Mr. Pojunas.

3

Next on the scheduled agenda is Professor Dennis

4

Crouch, although I don't believe he has arrived.

5

So, one must assume there are weather difficulties

6

or whatever it is that happens between here and

7

Missouri.

8 9 10

(Laughter) So, I will go on to our next speaker,

Kristi Nicholes.

Kristi comes from Burton, Arent

Fox.

11

Ms. Nicholes.

12

MS. NICHOLES BURTON:

13 14

Good morning.

Thank you for inviting me here today. Actually, I've been a patent

15

practitioner for approximately 10 years, first

16

in-house at a large corporation and now working

17

for Arent Fox as a patent attorney.

18

DR. GRAHAM:

Thank you.

19

MS. NICHOLES BURTON:

No problem.

Most

20

of my practice is focused on transactional as well

21

as prosecution matters, so I'm going to focus

22

primarily on some of those considerations today. Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 102

1

But first I just want to make clear that I'm

2

speaking on behalf of myself mostly today and that

3

not all of the partners at the firm necessarily

4

agree with all the positions that I'll be making.

5

So, the primary considerations that we

6

have or I have concern fees and costs, assets,

7

asset transfers, the prosecution and mechanics of

8

submitting the information, and any penalties and

9

incentives that may be imposed.

I'm not sure if

10

I'll be able to get to all of those in this five

11

minutes, but I will do my best.

12

So, Scott just covered the various times

13

at which ownership information is anticipated to

14

be required for submission during prosecution and

15

the life of a patent.

16

sort of administrative burden.

17

hear that the fee, actually, for recordation has

18

been abolished.

19

an action that is required, it's going to require

20

attorneys fees and other efforts from the folks

21

involved.

22

However, I think that it is important to

So, clearly, there is some I was happy to

But, still, if there's a form or

So, there is an administrative cost.

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

disseminate and collect the information and to

2

make it available.

3

Page: 103

I would like to point out that if an

4

ownership or ownership in a case changes, then I

5

would think that the costs associated with

6

recording the information could actually be

7

negotiated in the transaction or ultimately sort

8

of distributed between the buyer and the seller in

9

the market.

So, it's not necessarily the inventor

10

or the applicant but, you know, it's going to be

11

distributed amongst various parties involved in

12

the transfers.

13

I would like to mention the mechanics of

14

submissions, so, you know, will it be required for

15

both recordation as well as submission of the

16

ownership interest information both through the

17

assignments database or within the prosecution

18

file?

19

to the administrative burden and could

20

significantly increase the costs and time

21

involved.

22

I think that that, too, would actually add

I think another issue that's been Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 104

1

discussed is the amount of time that it takes to

2

research title issues in a case, and I think that

3

that's significantly enhanced when you're looking

4

at requiring information retroactively.

5

cases that have already been filed or patented, if

6

you do need to go back into the file histories now

7

because of a mandatory requirement, that could

8

absolutely take a significant amount of time and

9

cost in order to ascertain what the ownership or

So, for

10

chain of title is for a particular case.

11

think that that needs to be balanced and

12

considered in terms of should it just be

13

prospective.

14

then the amount of information, the value of

15

information that's available would not be complete

16

or thorough and therefore may not be as helpful as

17

what we're looking for.

18

So, I

However, if it's only prospective,

With regard to asset transfers,

19

transparency and accuracy of the ownership

20

information is imperative, and when doing due

21

diligence it absolutely would reduce the fees and

22

time associated with determining who are the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

parties at play?

2

we selling to?

3

transaction?

4

Who are we buying from?

Page: 105

Who are

Or who's involved in the

When researching or performing due

5

diligence on a patent, one of the first steps I do

6

is actually go to the USPTO website and perform a

7

search of patents in the database and also patent

8

applications.

9

then I have to go to the assignments database in

Once I do get my set of inquiries,

10

order to determine if there have been any changes

11

in ownership or updates to title or change in

12

assignment.

13

I'll look at the inventors of the patents and then

14

go back and search for the inventors in the

15

database to see if there are any other potential

16

patents or applications that may be included in

17

the portfolio.

18

And subsequently, after that usually

Then, obviously, there's another step to

19

go back to the assignments database if you've

20

uncovered any additional documents, and this

21

process takes a significant amount of time,

22

particularly when the information is not clear or Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1 2

Page: 106

available. So, one of the proposals that I think is

3

very critical to making this requirement valuable

4

is somehow having interaction or integration of

5

the assignments database with peer and also the

6

searching engines so that you don't have to go to

7

three different places for the information; it's

8

just one search somewhere and you can click on a

9

link and you get the agreement right there, and

10

you don't have to spend additional time and

11

expense of obtaining copies.

12

So, now with respect to prosecution and

13

the mechanics, I want to first discuss the

14

requirements for proof of ownership in the cases

15

where an applicant has established ownership in a

16

patent application just to make the point that we

17

don't want to add an additional step or level or

18

requirement during prosecution.

19

has already established ownership, then is this

20

going to be a second requirement on top of that to

21

also provide further evidence?

22

If an applicant

And, finally, I would also like Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 107

1

clarification on the requirements.

2

to be a free submission, sort of like an IDS,

3

within three months, and then if it's not filed

4

within three months and there's a fee imposed or

5

something of that nature?

6

very important.

So, mechanics are also

7

Thank you very much.

8

DR. GRAHAM:

9

12

Thank you, Ms. Nicholes

Burton from Arent Fox.

10 11

Is this going

Next on the list we'll hear from David Martin.

David comes from M*CAM. DR. MARTIN:

I have the good fortune of

13

being one of the longstanding critics of the

14

United States Patent Office and its practice, so

15

it's unusual when I get to stand in front of the

16

Patent Office and actually commend it for (a)

17

doing a great job on something and (b) something I

18

fully support.

19

you're going to be a critic, you have to also

20

acknowledge when things are being done

21

exceptionally well.

22

And that's really important.

If

The second thing is in the interest of Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 108

1

five minutes, those of you familiar with my

2

speaking and my lecturing know that five minutes

3

is my enemy, so I have prepared remarks, which I

4

am going to turn to and uncharacteristically also

5

read them so that we actually stay focused.

6

Essential for the banking and capital

7

markets securities since the 1950s, Article 9 of

8

the Uniform Commercial Code acknowledges the

9

importance of the unambiguous

10

real-party-in-interest as a feature of perfection

11

of security interests for collateral.

12

U.S. Code 261, which has been mentioned several

13

times today, the recordation is actually something

14

that happens inside of a limited time frame, and

15

we actually fully support the notion that the

16

reasonability of three months is actually

17

reasonable in transactions, and we think that the

18

current UCC practice is actually fully acceptable,

19

although we know that it's often not done by many

20

financial institutions.

21 22

Under 35

With respect to the RPI question, the USPTO is considering a broad and limited Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 109

1

definition of RPI, focusing primarily on the

2

internal procedural implications, litigation,

3

licensing, and infringement matters; and people

4

today have actually brought those issues up quite

5

frequently.

6

we're in, the majority of patents are actually not

7

subject to any of these issues.

8

subject to senior secured and perfected lien

9

interests.

But in the changing economic times

They are actually

That's where the real economics of

10

patents now lives.

11

to address those issues is actually becoming

12

significantly critical both from a

13

bankruptcy-trustee standpoint as well as from

14

secured regulatory capital issues.

15

important to realize that we're in changing times,

16

and changing times require an adaptation, and we

17

really appreciate that we're having this

18

conversation.

19

And increasingly, the failure

And it's

While I am sympathetic to the view that

20

the USPTO is currently taking, it may be

21

informative to consider the UCC Article 9

22

precedent, particularly in bankruptcy, given the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 110

1

centrality of these assets to now the majority of

2

U.S.

3

not be limited definition to just the entity with

4

a legal right to enforce but may also potentially

5

look at any party subject to subsequent

6

encumbrances as defined under the pre-petition

7

definition of parties of interest for financial

8

transactions, which I think is actually extremely

9

important to harmonize.

Businesses.

10

Within this context, RPI might

The implications of accurate RPI

11

transparency become increasingly essential as the

12

financial markets become more educated as to the

13

importance of intellectual property in the capital

14

markets.

15

One only needs to read the newspaper to

16

see the number of significant financial

17

transactions when RPI is relevant on two levels.

18

Was Kodak's Digital Imaging Portfolio worth 2.2 to

19

$2.6 billion as was imagined by Mike Luzinski at

20

284 Capital Partners, or was it worth the $525

21

million, the subject of a bid between -- are you

22

ready for this? -- competing parties who are now Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1 2

Page: 111

operating as though they work together? Well, how could the valuation disparity

3

be so vast?

4

is not merely assessed by the substance of the

5

artifact or their claims but the context in which

6

they are enforced.

7

If you don't get that right, you don't get the

8

number right.

9

Quite simply.

The value of patents

That's an enormous difference.

The senior secured noteholders, the

10

beneficiaries of general intangibles and specified

11

intangibles like Citibank and Blackstone, cannot

12

rationalize estimates of collateral value if they

13

don't know the owners of the related parties.

14

you don't have that visibility, there is no way to

15

clarify whether somebody is a competitor, whether

16

somebody is a licensee or a potential litigant.

17

If

In the DOJ's Antitrust Division's June

18

26, 1997, review of MPEG LA enforcement

19

intentions, the department's position was informed

20

under the explicit understanding that independent

21

parties qualify and administer the properties on a

22

day-to-day basis to ensure that there were not Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

embedded conflicts from a competitiveness

2

standpoint.

3

Page: 112

To establish essentiality, an

4

independent expert was deemed necessary to allay

5

antitrust concerns.

6

Division of the Antitrust Division of the United

7

States DOJ, James Tierney, when commenting on the

8

growing patent pooling activities in non-operating

9

entities, stated that the DOJ's challenge is to

10

know whether separate companies -- and that's a

11

legal term under the Justice Department's concern

12

-- are in fact colluding.

13

parties, you cannot determine whether or not there

14

is collusion, and that is an impossibility in the

15

present regime.

16

impediments facing law enforcement and financial

17

regulators.

18

The chief of the Technology

If you don't know the

He is understating the

When addressing Apple and Google's

19

investigations, Acting Assistant Attorney General

20

Joseph Whalen stated that the DOJ review is

21

directed to reasonable and non- discriminatory or

22

RAND licenses but did not do anything to look at Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

related parties.

2

understand what patents were actually

3

RAND-subsequently- attached versus

4

non-RAND-attached was impossible.

Page: 113

5

And as a result, the ability to

At no point did the DOJ consider the

6

non-RAND- encumbered, non-standard-essential

7

patents, and properties held by non-disclosed

8

corporate entities controlled by or in contracted

9

relationship with Apple and Google.

And, by the

10

way, this is not the fault of Apple and Google;

11

it's actually the fault of a system that doesn't

12

make this transparent.

13

practical failure.

14

This is actually just a

RPI definition must accord all parties

15

of interest, particularly the investing public in

16

the operating businesses of America, a clear

17

picture of the beneficiary of patent rights at all

18

times.

19

the limit of three months inside the UCC Article 9

20

is harmful to markets.

21

undermine collateral confidence, making capital

22

flow to critical businesses impossible and

Ambiguity of recordation timeliness beyond

Incomplete disclosures

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 114

impractical.

2

I commend the harmonization of

3

regulations promulgated by the USPTO with the

4

established UCC Article 9 provisions that we

5

already have in place, and I also commend the

6

consideration of economic interests to be drawn

7

from the securities and banking laws, which

8

actually are equally enforceable and also clearly

9

defined in bank (inaudible) statutes.

10

Thank you very much.

11

DR. GRAHAM:

Thank you.

Next on the

12

agenda, William Hulsey.

13

Hulsey PC.

14

attendance, so we move on to the next speaker.

15

William Hulsey is from

And William Hulsey is also not in

Next speaker is George Spencer.

George

16

Spencer comes to us from Antonelli, Terry, Stout &

17

Kraus.

18

MR. SPENCER:

Well, thank you very much

19

for inviting me to speak here and of course the

20

usual disclaimer.

21

with the firm.

22

a partner there.

Whatever I say has nothing to

In fact, I'm a counselor, I'm not So, I'm at liberty to speak.

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 115

I'm here on a topic of what may be

2

considered gamesmanship in a way, namely, take a

3

situation where a company has an agreement with an

4

inventor to assign whatever the employee makes.

5

But the company does not require the inventor to

6

sign an assignment, and no assignment is in

7

existence.

8

patent is issued, possibly in the name of the

9

inventor, but there does exist an obligation to

So, the prosecution continues, the

10

assign.

11

that, but assuming the attorney does and the

12

attorney gets paid by the company, well, I

13

supposed the attorney would consider that to be

14

the real-party-in-interest.

15

Now, the attorney may or may not know

But how would the Office treat that

16

particular situation where there exists an

17

obligation to assign but no assignment has

18

actually come into being.

19

recorded.

20

ultimately come to light in the course of

21

litigation.

22

considered.

There's nothing to be

Maybe the agreement to assign might

That is a problem that may need to be

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 116

Now, going a step further, suppose there

2

does not exist an obligation on the part of an

3

inventor to assign the invention that he's made

4

and for which an application has been filed.

5

let us say that there's a mere possibility or

6

perhaps even a probability that an assignment will

7

come into being.

8

considered a party in interest?

9

know how that should be handled at this point, but

10

I leave it to the wisdom of the authorities of the

11

PTO to come up with a decision on that.

Would the potential assignee be

12

Thank you very much.

13

DR. GRAHAM:

I really don't

Thank you, Mr. Spencer.

14

And for our final discussant today, formal

15

discussant, Erik Lieberman.

16

from Food Marketing Institute.

17

But

MR. LIEBERMAN:

Mr. Leiberman comes

I'd like to thank the

18

PTO for the opportunity to speak this morning.

19

really appreciate it.

20

I'm with the Food Marketing Institute.

21

We are the trade association for the supermarket

22

industry, and many of you may be wondering what

We

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

the heck are the supermarkets doing here this

2

morning.

3

Page: 117

Well, I've got two words for you:

4

"patent trolls."

Patent trolls have become an

5

enormous headache for our industry, costing

6

retailers and wholesalers millions of dollars in

7

legal fees, settlements, and other resources each

8

year.

9

burden, many of these costs are passed down the

While retailers bear the brunt of this

10

supply chain to consumers, and with food costs

11

rising this is the last thing consumers need.

12

This is not just a high-tech issue; it's a

13

business issue.

14

outside of the high-tech area are affected by

15

patent trolls every year.

16

Tens of thousands of businesses

Patent trolls, also known as patent

17

assertion entities, purchase patents solely for

18

the purposes of enforcing them with no intention

19

of further developing, manufacturing, or marketing

20

the patents.

21

down for licensing fees over such commonly used

22

technologies as store locator technologies on

Retailers have been sued or shaken

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 118

1

their website or WiFi.

I just saw an article

2

about a small business that was sued for using a

3

scanner.

4

It's a huge problem. Licensing fees are often priced

5

precisely at the level where it makes economic

6

sense for a business to pay rather than to pay the

7

legal fees to fight the PAE.

8 9

And the activities of patent trolls do nothing to help our economy or further innovation.

10

It's legal extortion, and something must be done

11

to stop it.

12

Most businesses simply don't have the

13

resources to track hundreds of thousands of

14

patents, patent trolls, and the specifics of the

15

technology their using in many cases.

16

tell you we represent some enormous retailers, and

17

they don't have the resources to do that.

18

in the business of selling food.

19

with a host of other legal and regulatory

20

obligations related to real estate, food safety,

21

labor law.

22

they shouldn't have to deal with these types of

And I can

They're

They're dealing

They don't have time to do this, and

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 119

actions.

2

Fighting trolls is a real challenge,

3

given the limited the resources of business and

4

the fact that patent trolls are very adept at

5

manipulating the system.

6

entities have hundreds, even thousands of shell

7

companies, and it's simply impossible for our

8

members to keep track of them.

9

Some patent assertion

So, we need greater transparency in

10

patent ownership where the public can easily see

11

who owns what and where they acquired it.

12

system should require acknowledgment of agreements

13

between shells and other entities.

14

that troll issues should be addressed through

15

competition laws and regulatory enforcement, so

16

we're very encouraged that DOJ is here this

17

morning, and we're also encouraged that the FTC

18

and DOJ held a public workshop on the issue last

19

month.

20

The

We believe

We also think the PTO should consider

21

some proposals such as penalties for not recording

22

assignments.

Also, the PTO needs to think about

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 120

1

what they can do to ensure that the

2

real-party-in-interest records as opposed to a

3

shell with a misleading name.

4

do we keep assignment information updated?

5

are the things the PTO can do that -- when

6

maintenance fees are due, do you require some sort

7

of update?

8

address this problem of patent trolls, which is

9

affecting a huge proportion of the economy beyond

10

Additionally, how What

These are measures we think can help

just the high-tech area.

11

Thank you.

12

DR. GRAHAM:

Thank you, Mr. Lieberman.

13

So, that ends our formal presentations.

14

moving on to possible commentary from the

15

audience, I would like to engage in some

16

discussion among the speakers here since we're in

17

a roundtable.

18

questions both from the several representatives of

19

the PTO who are around this table as well as

20

comments from speakers directed to things you've

21

heard today.

22

Before

And to do that, I'd like to invite

Since we do want to keep things civil, I Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 121

1

ask that you direct all questions or comments to

2

me, and then I will redirect your questions to the

3

group and the appropriate people.

4

So, with that, let me introduce Michelle

5

Lee, who is the USPTO's director of the Silicon

6

Valley Office of the USPTO, and in addition

7

Saurabh Vishnubhakat, who is an expert advisor

8

here at the Agency.

9 10

I know that Michelle has a question, and so I'll ask Michelle to kick us off here.

11

MS. LEE:

So, thank you all for the

12

very, very helpful comments today.

13

much appreciates it.

14

The USPTO very

I have a question for those of you in

15

the room and for those of you who are

16

participating via Webinar or who may be

17

considering submission of written comments later

18

on.

19

question, the PTO would appreciate it.

If you could and have thoughts on this

20

But in the request for comments, the

21

proposal is to disclose RPI information at the

22

time of filing, at the time of publication, and Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 122

1

when the maintenance fees are due.

2

the time of prosecution there's a suggestion that

3

if there's a change that occurs in ownership that

4

that change be recorded within a reasonable period

5

of time.

6

suggest a reasonable period of time as being three

7

months.

8 9

Also, during

And in the request for comments, we

The PTO would welcome some input on the burden of that to the companies and their lawyers.

10

Is that a reasonable period of time, particularly

11

in a situation where a company may be doing a lot

12

of acquisition activity of large portfolios, and

13

are there circumstances in which you may need

14

additional time and perhaps suggestions on how the

15

PTO might be able to accommodate you so that we

16

have a workable system but yet we're also getting

17

the information that we need in a timely manner?

18

That's issue number one.

19

Issue number two is, on the issue of

20

penalties what do the stakeholders and what does

21

the public think is appropriate?

22

DR. GRAHAM:

Thank you, Michelle.

I

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 123

1

should state at this point that we are leaving the

2

written comment period open for two weeks until

3

Friday, the 25th of this month, and so those who

4

are with us via Webinar or otherwise may do that.

5

But does anyone have a specific response to that

6

question?

7

tent cards in the standard fashion.

8

David, please.

9

DR. MARTIN:

I ask you, if you do, to put up your

I think as a practical

10

matter, the recommendations that we've commented

11

on with respect to the lien interest filings and

12

so forth have been informative in this, and the

13

way in which they've been informative is in the

14

transfer of interest particularly in subordination

15

agreements and credit agreements.

16

unusual to find a disentanglement period where

17

there may be assets that transfer very cleanly and

18

there are assets that do not.

19

you can have a complete period inside of that 90

20

days is unreasonable because of the

21

disentanglement issue with respect to our

22

experience in the credit agreement space.

It is not

So, the idea that

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 124

So, I just wanted to raise the issue

2

that there is a legitimate intent to disclose that

3

probably is appropriate, but the full disclosure

4

that would be recorded against every patent may

5

not be feasible in that time frame.

6

there needs to be an awareness of that issue,

7

because we've seen that as a significant impact.

8

So, just from experience I would comment that

9

that's important.

10

DR. GRAHAM: One follow-up question.

12

your field?

Thank you, David Martin.

11

13

DR. MARTIN:

So, I think

How is that resolved in

Well, as a practical

14

matter, and the Kodak bankruptcy is informative in

15

this particular instance because -- and the GE

16

sale of GE Plastics to SABIC is informative in

17

this.

18

researched.

19

debt holders typically will be the lien interest

20

holders that are identified.

21 22

These are two cases that are very easily What you'll find is that the senior

But the secondary lien holders will be parties that are not disclosed, because they live Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 125

1

inside of the general and tangible lien.

2

general and tangible lien is much more difficult

3

to untangle, particularly in syndicated credit

4

agreements.

5

a subset of the assets is transferred immediately

6

as a consummation of the transaction, and then

7

over a period of time the rest get resolved.

8 9

And that

And so what typically is happening is

But from the standpoint of the intent of the rule, having that, it is appropriate to leave

10

open a filing period that says that within 90 days

11

it's reasonable to say that there is an intent to

12

comply.

13

practical matter, take time to fully implement,

14

and that's what happening right now.

15 16 17

But the intent to comply may, just as a

DR. GRAHAM:

Thank you very much.

I see

that Kristi Nicholes Burton would like to comment. MS. NICHOLES BURTON:

In considering the

18

acquisition of patents, I think the most efficient

19

or the best time to record the information is

20

literally within months of completion of the

21

transaction.

22

reasonable, however with extensions, because there

So, a three-month period seems

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 126

1

are various issues that can crop up.

2

seller doesn't provide you the documentation right

3

away.

4

having difficulty getting, you know, records or

5

things that you need.

6

need to be a balance or contingency, but for

7

something that's clear cut, if you have the

8

document in hand it would be best to record it at

9

that time.

It could be a foreign entity, and you're

10

DR. GRAHAM:

11

-- very good.

12

Wamsley.

13

Maybe the

So, I think that there does

Thank you very much.

I see

He's point to you, so Herbert

MR. WAMSLEY:

On the question of when

14

the information should be provided, I would note

15

that I think the timing is less urgent to provide

16

the information during the first 18 months after

17

filing, because the application normally has not

18

been published.

19

viewpoint of IPO members, at least, I think, we

20

see the RPI information valuable in knowing who

21

owns the patents.

22

there's so much benefit in having that information

And looking at it from the

But I don't believe that

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 127

for the first 18 months.

2

On Michelle Lee's other question about

3

penalties, we don't believe that the penalty

4

should at all touch the area of inequitable

5

conduct, patent enforceability.

6

of saying that penalty include ethical sanctions

7

against practitioners.

8 9

I would be wary

One of our members suggested monetary fines for failure to disclose RPI information as a

10

possible penalty, assuming the PTO would have the

11

authority to do that.

12

DR. GRAHAM:

Thank you.

Michael Lubitz.

13

MR. LUBITZ:

Thank you.

Michelle, your

14

questions -- I'm going to deal from the

15

transaction side and particularly with the time

16

period, and of course the danger there is when you

17

set a time period it's rather arbitrary.

18

there are special circumstances.

19

day-to-day life, what we see is a lot of

20

transactions happening where the entity that's

21

acquiring the assets is behaving as a pass-through

22

entity.

And

And in our

And there might be a variety of parties

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

involved.

2

know where the assets are eventually going to

3

settle.

4

So, as a consequence, you really don't

And from an administrative -- from a

5

burden side, there needs to be flexibility until

6

the transaction finally completes.

7

Page: 128

In addition, you're seeing extended

8

periods of review.

9

compliance with the DOJ of any deal that's over, I

10 11

I think there's a voluntary

think, 66 million or so that needs review. And so there are other regulatory

12

implications, and so even -- you know, so, that

13

will impact the time.

14

these assets and all of a sudden these maintenance

15

fees are opening up and you have an obligation to

16

report changes but you know that the ownership is

17

going to change, what do you do in those kind of

18

hybrid situations?

19

But also if you're handling

So, I think that there needs to be a

20

provision that doesn't -- in general, the timeline

21

is great, but there should be some type of

22

exception that allows parties to comply based upon Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 129

1

the nature of the transaction and some

2

reasonableness.

3 4

DR. GRAHAM:

Thank you.

And I see

Kenneth Nigon.

5

MR. NIGON:

My problem is with small

6

inventors, and we represent a number of small

7

inventors.

8

contacted by Intellectual Ventures to buy their

9

patents.

I've even had small inventors

Now, I don't know if they sold patents

10

or not, because Intellectual Ventures dealt

11

directly with them.

12

out here is a patent practitioner is very often

13

not going to know whether these transactions

14

occurred, but they're going to be the ones

15

responsible for filing these statements.

16

the client is uncommunicative, the practitioner is

17

not going to be able to get the information.

18

And what I'm trying to point

And if

So, I agree with Herb that I don't think

19

inequitable conduct should be a penalty.

I don't

20

know what kind of penalty to have, and I don't

21

know how to deal with this situation, because if

22

you allow the amount of time, which may be a year Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 130

1

or two between the time you talk to a client after

2

a transaction has occurred, then the duty to

3

record becomes meaningless, because there will be

4

these huge gaps that won't be covered.

5

DR. GRAHAM:

6

you have a follow-on?

7

Kristi Nicholes Burton.

8 9

Thank you very much. Please, go ahead.

MS. NICHOLES BURTON:

Yes.

Do

This is

On the other

side of penalties could also be incentives to

10

timely or promptly record.

11

maybe the time period is a little longer, I think

12

there are times, like when the application is

13

pending before it's published -- there are

14

considerations there, and maybe in certain

15

transactions that need a longer period -- but

16

maybe if recorded within a certain time, it could

17

also be considered to have an incentive to do

18

that.

19

the information promptly available and in the

20

record.

21 22

So, whereas, you know,

And that way, that would facilitate getting

DR. GRAHAM: another follow-on?

Thank you.

Ken, was that

Please.

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

MR. LUBITZ:

Page: 131

Just a quick comment.

The

2

way that I understand the proposed rules or

3

proposed framework is that the obligation is on

4

the new owner.

5

there really wouldn't be an obligation, and they

6

wouldn't be subject to a penalty.

7

buyer or the new assignees.

8

really a concern.

9

bring parties who actually own the assets into

10

So, in the case of the inventor,

It would be the

I don't think that's

What we're trying to do is

compliance.

11

A question, though, is what about how do

12

we orchestrate this retroactively, and who does it

13

apply to?

14

threshold owners so we don't unfairly burden small

15

inventors?

16

And so should it only apply to certain

DR. GRAHAM:

Thank you.

And for the

17

transcription, let me just correct that that was

18

Michael Lubitz who just spoke.

19

Courtenay -- Courtenay Brinckerhoff.

20

MS. BRINCKERHOFF:

21

general comment.

22

the open question.

Yes, I see

This is just a

It's sort of slightly related to

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 132

I just wanted to point out that if you

2

assume a transaction cost of a hundred dollars per

3

disclosure, which I think probably underestimates

4

in most circumstances, especially if any inquiry

5

is involved, and you take that three times per

6

application and you multiply that by HP's 7,000

7

applications, that's $2.1 million.

8

how the money should be spent to promote

9

innovation?

10

DR. GRAHAM:

11

(laughter), I'll let HP respond.

12

MR. POJUNAS:

And is that

Since that implicated HP Mr. Pojunas.

Yeah, I think this sort of

13

gets back to one of my points, which was that this

14

information would be provided at key checkpoints

15

in prosecution when we'd be touching the case and

16

we'd be touching ownership in any case.

17

view, the hundred dollars seems a bit much to me.

18

It would essentially be confirming do we still own

19

the case, and if so, you know, maybe it's a

20

checkbox on a form or a pretty simple question

21

ultimately.

22

DR. GRAHAM:

Thank you.

So, in my

That raises an

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 133

1

issue, if I may inject something here, and I do

2

want to get to these other comments.

3

heard from Mr. Wamsley and others that this could

4

be, you know, burdensome -- enormously burdensome

5

-- and we're sensitive to that here in the Office,

6

having looked at the patent records and studied

7

them as the economist.

8

you know, a very large portion of the patents, the

9

applications that are pending, and the patents

You know, I

You know, it's clear that,

10

that are issued every year are held by, you know,

11

a relatively few number of companies, which are

12

largely those represented in your organization.

13

That said, of course, independent

14

inventors are extremely important, too, and these

15

burdens can at the margin -- right? -- when you're

16

operating at the margin can be important as well.

17

So, what I'd like to hear is whether there is

18

anything that can be done in a way in which our

19

information systems work or the way in which we

20

organize the collection of data here at the USPTO

21

that could facilitate the reporting of these

22

things across large portfolios -- that can be the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 134

1

case -- or in the case in which it's really firms,

2

law firms, acting for many autonomous inventors.

3

Both those things are, I think, are important for

4

us to understand if we're going to understand the

5

consequences of doing something like this.

6 7

So, if I can ask -- I see Courtenay Brinckerhoff.

8 9

MS. BRINCKERHOFF: that.

Sure, some ideas on

One thing that was sort of touched on that

10

-- this seems to be proposed as a separate

11

requirement that we filed in an application.

12

you would be duplicating recording in assignment

13

and filing a form in an application.

14

duplicity should be eliminated if possible.

15

So,

That

Also, the proposals -- although one of

16

the proposals was to initially provide the

17

information in the ADS; the other proposals were

18

requiring new forms at each stage of prosecution.

19

Again, that seems wasteful.

20

like -- I'm not sure there should be a requirement

21

to confirm at critical stages.

22

identify the information once and you have an

So, any -- it seems

If you've had to

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 135

1

obligation to update, then you should only have to

2

disclose it once unless there's a change.

3

And then having a mechanism where you

4

could blanket -- make the disclosure in a number

5

of applications, with one paper, and also have

6

that account for your recordation.

7

that it could reduce the cost.

8

would take some changes on the Office side of how

9

the systems are integrated.

10

DR. GRAHAM:

comments from down the table.

12

you have a comment?

13

the earlier discussion.

14

But I know that

Thank you.

11

Those are ways

I had seen

Professor Rai, did

It may have been directed to

PROFESSOR RAI:

Please feel free to -Yeah, it was directed a

15

little bit to a comment that I think was made with

16

respect to retroactivity.

17

important concept to keep in mind for purposes of

18

administrative law.

19

So, that's a really

As I see the proposal as currently

20

structured, I don't see retroactivity issues in

21

it.

22

constitutes primary retroactivity versus secondary

But it's a complex concept regarding what

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 136

1

retroactivity and something that's worth thinking

2

about for the PTO.

3

DR. GRAHAM:

4

MR. NIGON:

Thank you.

Kenneth Nigon?

I just want to bring up a

5

point that other people have brought up but just

6

to emphasize that it would be great to have the

7

actual document available to look at without

8

having to request a certified copy the way it is

9

in the trademark system right now.

10

DR. GRAHAM:

Thank you very much.

11

MS. NICHOLES BURTON:

So, I think -- I

12

don't know if it's possible.

13

systems you have available, but if you could get

14

some data as to what is the average number of

15

transfers per case in its lifetime, and what kinds

16

of entities are the ones involved in that.

17

could possibly give us a little bit more

18

understanding of what the administrative costs

19

might be ultimately.

20

DR. GRAHAM:

You'd mentioned the

Thank you.

That

That was Ms.

21

Nicholes Burton.

Thank you for that.

I suppose

22

that raises another issue that I actually wanted Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 137

1

to direct to Michael Lubitz, if I could.

So,

2

seemingly the way that we could collect that

3

information about the frequency of transfers is in

4

our assignments data.

5

-- and this is one of the questions I wanted to

6

put to Mr. Lubitz, because he could help us to

7

understand what a voluntary system gives us.

But I've always suspected

8

To the extent that you've been able to

9

compare the data we have against what's actually

10

going on in the marketplace, actually going on in

11

the transactional space, how well does this

12

voluntary system of recordation reflect what's

13

really going on out there?

14

MR. LUBITZ:

That's a really good

15

question, because part of the answer is we don't

16

know, really.

17

-- most of what we find is the majority of parties

18

record eventually -- the questions eventually.

19

So, we see, based upon parties' practice, that

20

they'll -- and we'll know of the transaction

21

through whatever channel, and we'll see the

22

recording happening, you know, three, six, nine --

And, you know, I don't necessarily

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 138

1

a year out.

And so things tend to eventually get

2

recorded.

3

information is recorded and then distributed to

4

the public.

5

a great question about what can we do to make this

6

data more available and useful.

The issue is more about how that

And so the question that you asked is

7

And so one thing, just off the top of my

8

head, is that we would love to be able to show the

9

relevant personnel at the USPTO the payment we're

10

dealing with on a daily basis and the issues that

11

we have to deal with in terms of looking at the

12

feeds and trying to establish some type of

13

standardization.

14

I don't know if I answered your

15

question, but the difficulty is that even though

16

the recordings are happening, it's understanding

17

them.

18

DR. GRAHAM:

I see David Martin.

19

DR. MARTIN:

Once again, using a

20

triangulation approach, because that's the only

21

way we can tackle this question, we actually look

22

at two sources.

One is a very general database

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 139

1

that's available fairly easily, which is the

2

recordation of liens by the State Corporation

3

Commissions or the Secretaries of State, depending

4

on the UCC-adopted standard, because Article 9 has

5

-- you know, some states have the updated Article

6

9, some states are using the preceding one.

7

find that that record is actually the most

8

accurate right now, because it actually records

9

the real interest.

We

It is the financial interest

10

that is actually taking an interest in the

11

intangibles.

12

and it has very little overlap with the USPTO

13

record.

14

internally at USPTO has a lag of probably

15

somewhere in the two to three quarters where the

16

State Corporation Commission records are actually

17

much more refreshed.

18

So, right now that's the best data,

So, we find that the error rate

The other place that we look, and we use

19

this very extensively globally, is in securities

20

filings, because typically in footnotes of

21

transfers, releases of liens, things like senior

22

security agreements, and so forth, give us the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 140

1

actual title name where we can then go back and

2

actually look at where the records actually are.

3

And that's why I think one of the things that I

4

would encourage is actually the USPTO to do a

5

better job of promoting the existing structures,

6

because right now there are some really good

7

recordation processes that are actually not

8

complied with if you look at a lot of banks, if

9

you look at a lot of securities firms.

And we

10

think that you guys could do a better job of

11

promoting what you already have as a way to catch

12

up with other systems.

13

encourage us to look at places that we already

14

have solutions rather than having to create

15

redundancies.

16

can learn from or adopt best practices from, I

17

think that's ideal, and that's where we go for the

18

data more often than the USPTO current

19

collections.

20

But I think -- I would

I mean, if there's a place that we

So, I think the system macro actually is

21

working better than we think it is.

I think it's

22

maybe not working here as optimally as it can, but Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

it's not that it's not available.

2

available, just not implemented.

3

DR. GRAHAM:

Thank you.

Page: 141

I think it's

It would be

4

helpful, if you are going to be submitting

5

follow-on comments in written form, if you could

6

give us some sense, if it's available and

7

possible, some sense of what the lag looks like

8

and also some sense of what really just never

9

arrives.

10

DR. MARTIN:

(off mic)

11

DR. GRAHAM:

Great, thank you.

12 13

Yes,

Michael Lubitz. MR. LUBITZ:

I just had a comment on

14

David's comments.

David's really focusing on

15

secure transactions involving financial entities

16

where they have really an incentive to record so

17

they can perfect their interests, and if they fail

18

to do that, they lose that collateral.

19

try to encourage -- and this is about the

20

education, this is what David recommended -- is

21

that everyone should be in the practice of

22

recording changes in ownership at the USPTO to

What we

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 142

1

protect their interests.

And it seems that a lot

2

of the discussion on the legal side was about, you

3

know, if you don't record your interest as the

4

real owner, then you're going to lose your

5

standing to pursue remedies that you have under

6

the regulations or the law.

7

and that's kind of the crux of the issue, that

8

people should record on a timely basis whether

9

they have a security interest or not and then to

And so that seems --

10

make that process as painless as possible, because

11

the people only record what they have to

12

generally, and so that's -- the real challenge is

13

how do you implement this to get that type of

14

information on a timely basis.

15

DR. GRAHAM:

Courtenay Brinckerhoff.

16

MS. BRINCKERHOFF:

I just have one minor

17

comment that Mr. Lubitz comments brought to mind.

18

It has nothing to do with the change in the law,

19

but under the current assignment recordation

20

practice, if something is assigned in error, the

21

only person that can correct it is the person who

22

recorded it.

So, if we discover that someone

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 143

1

transposed numbers and inadvertently recorded an

2

assignment document under our client's patent, we

3

are at the mercy of asking that person to correct

4

their error.

5

that is going to be looking at the significance

6

and criticality of the assignment database, that

7

something that you all should also look at is

8

letting the actual patent owner correct any errors

9

that have been recorded against it.

10

So, I think it's the Patent Office

DR. GRAHAM:

Thank you very much.

11

There's an issue also, Courtenay, that you brought

12

up about how there are several places in the

13

statute that talk about the optionality, that this

14

is actually -- it's optional to provide this

15

information.

16

are any views from the roundtable on that

17

particular issue.

I would just like to hear if there

18

Professor Rai?

19

PROFESSOR RAI:

It is the case that §

20

261 of the patent statute does not require

21

recordation; it provides an incentive to record,

22

because if you don't record, you can't assert Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 144

1

against a subsequent purchaser.

That said, I

2

think to say that § 261 provides the exclusive

3

venue by which these issues can be dealt with I

4

think would be a very strong interpretation - and

5

forgive my Latin here -- of the expressio unius

6

principle.

7

principle of statute interpretation that says if

8

Congress stated something in one section of the

9

statute that prohibits interpretations that would

The expressio unius principle is a

10

either be supplementary to that or even perhaps in

11

slight tension with that provision.

12

would be a very strong interpretation of expressio

13

unius to say that 261 is the exclusive remedy in

14

this particular context, particularly given, as I

15

said, the patent authorities, the patent

16

regulatory authority given under § 2.

17 18 19

DR. GRAHAM:

Thank you.

I think that

And Courtenay

Brinckerhoff. MS. BRINCKERHOFF:

I would just also add

20

that also overlying this issue is the AIA, which

21

newly created this ability to name an applicant

22

that's not an inventor but made that wholly Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 145

1

optional.

2

under the AIA you can still name the inventors as

3

the applicant.

4

about the authority as well.

5 6

So, even is an application is assigned,

I think that colors my questions

DR. GRAHAM:

Thank you.

Saurabh

Vishnubhakat, USPTO.

7

MR. VISHNUBHAKAT:

So, I'd like to kind

8

of propose a general question to the panel about

9

the way in which we've discussed this being, you

10

know, kind of a -- how to frame it, even -- we

11

don't know what we don't know, right?

12

of our ignorance is unknown to us in some sense in

13

this area, because we are unable, perhaps except

14

in the case of secured transactions, we really

15

don't know how best to calculate the cost and

16

benefits at a very high level of granularity.

17

what I've heard from some of the panelists is that

18

if the benefits aren't high, then all we're

19

introducing is transaction costs that are unknown

20

and perhaps unknowable until we're in the thick of

21

it.

22

from the idea that unless we can do this well we

The extent

So,

So, should we perhaps go further and start

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 146

1

shouldn't do this at all, and so ask for something

2

more muscular like recording of all transactions,

3

recording of all assignments, and do away with

4

this, you know, kind of checkpoint-based approach?

5

I think I heard Ms. Brinckerhoff say

6

that if we have an obligation, an ongoing

7

obligation, to update once the initial requirement

8

has been satisfied, then the checkpoint approach

9

may be moot.

So, is that something that the panel

10

would be supportive of, to step back from this,

11

you know, maintenance fee-only or particular

12

points during prosecution, and just say that

13

there's a real ongoing obligation to just record

14

all assignments and make sure that the record is

15

updated that way?

16

MS. LEE:

If I could just add a point to

17

what my colleague was saying, because I think

18

that's a very good point, because I think there

19

have been academic studies that indicate that NPEs

20

tend to buy patents near expiration.

21

true that that's the case and if it is, you know,

22

something that is of interest to the companies and

So, if it's

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 147

1

the stakeholders -- right? -- it is truly the

2

checkpoint at maintenance fee payment stage,

3

which, as you know, toward the end of the patent

4

gets to be very -- I mean, that's a long period of

5

time.

6

proposal?

7

Is the proposal really the most effective

DR. GRAHAM:

Thank you.

For the

8

stenographer, that was Michelle Lee.

9

Martin.

10

DR. MARTIN:

I see David

I think the Constitution is

11

very clear that the benefit is to a party.

That's

12

why we have this thing in the first place.

So,

13

we've got to remember that the Constitution starts

14

with saying this is a benefit which is a social

15

contract between the public, who actually

16

acknowledges a commercial aberration, and the

17

beneficiary, who is a beneficiary.

18

jumping so far into the weeds of procedure to

19

forget the actual constitutional framework, which

20

is pretty important.

21 22

And they were

That would suggest that the beneficiary, over the duration of the statutory period, is Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 148

1

actually material at every point during that

2

period.

3

unequivocally stating.

4

a question of whether or not the social benefit,

5

which is the social half of the contract, is ever

6

subject to a cancellation of interest of the

7

public until the cancellation of the right, which

8

is it's actually statutory life.

9

the duration on a milestone procedural basis is

That's what the Constitution is So, I don't think there's

So, I think that

10

actually somewhat irrelevant.

And I actually

11

agree that procedurally if there is no change, the

12

additional burden of reporting it still the way it

13

was is actually just a burden.

14

society benefits from that.

15

society does benefit from finding out that the

16

beneficiary has changed, and to my point of the

17

bankruptcy of Kodak, it's very material.

18

a difference between those patents held by Kodak

19

and those patents held by now an association of

20

RPX and Intellectual Ventures and Google and Apple

21

and everybody else.

22

of the operating conditions of the economy.

I don't think

I do think that

There is

That's a material alteration

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

Page: 149

When the Patent Office was moved to the

2

Commerce Department -- because, remember, this

3

used to be another jurisdiction -- when it was

4

moved to Commerce, it was moved to Commerce

5

specifically for the point I'm raising.

6

actually part of the economic engine of growth,

7

and it was for the incentivization of growth.

8

That's why we moved it out of Interior.

9

important to understand that the legislative

This is

And it's

10

framework of the migration of the Patent Office

11

and the constitutional framing actually answers

12

our question, and that is as long as the patent is

13

outstanding, the beneficial interest holder is

14

material to the public, because that is the social

15

contract under which the patent is established.

16 17 18

DR. GRAHAM:

Thank you.

I see Marian

Underweiser. DR. UNDERWEISER:

Yes, thank you.

It's

19

an interesting question.

I think we've heard that

20

most of the business interest here is in favor of

21

transparency, and I think it's really important

22

that we're talking about the burden, and the Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 150

1

burden is primarily to the patent practitioner

2

community or it's at least borne by the patent

3

practitioners, which I think Colleen Chien pointed

4

out very clearly.

5

this benefit of having the accurate ownership

6

information.

7

that information changes.

8

burden on our practitioners on -- I'm a patent

9

lawyer -- on actually complying with these

So, we're talking about having

Maybe we only need it updated when Maybe that reduces the

10

burdens.

11

most of the more sophisticated parties who are

12

buying and selling patents will know or ought to

13

know when it's time to record their patent

14

assignments and their new interests perhaps with

15

the smaller parties, and we've talked about them

16

today.

17

And what I would suggest is that whereas

Something that would help might be to

18

not necessarily require another statement or paper

19

or due diligence at a lot of these checkpoints,

20

but perhaps there can be reminders.

21

be sent.

22

payment of maintenance fee.

Reminders can

Reminders can be sent at issuance or at Has there been an

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 151

1

assignment check, the assignment record? -- so

2

that if the practitioners and the small entities

3

are aware that they may have this ongoing

4

obligation, we have to have accurate ownership

5

information.

6

good.

7

will really read the paper and then be able to say

8

well, you know, have I complied with this duty?

9

So, this may be another way to accomplish the

10

But there are these checkpoints where they

goal.

11 12

Then, you know, that's well and

DR. GRAHAM:

Thank you.

And Michael

MR. LUBITZ:

I think that, you know,

Lubitz.

13 14

this is really -- there's a larger issue here

15

about competitiveness of the Office and of

16

intellectual property function within the United

17

States.

18

highest level and lead the leader.

19

there's some way that -- I look, really, at this

20

most as a module modernization where the

21

assignment module is modernized to create the

22

least burden but maximize the usefulness of the

And we want to be operating at the And so if

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 152

1

information within the various objectives of

2

businesses.

3

But I also think, from the standpoint of

4

the U.S.

5

we need to push and be the leader here.

6

mean, there's no question that the marketplace for

7

patents -- the U.S. is the leader.

8

we maintain that?

9

Economy and remaining competitive, that

DR. GRAHAM:

And, I

And so how do

Thank you very much.

I did

10

want to have an opportunity to give people who are

11

here visiting in the gallery today an opportunity

12

to make a comment.

13

compelled to give some commentary--

14

Okay.

If there's anyone who feels

Seeing none, and seeing no

15

additional requests, and given that we are close

16

on our appointed time, are there any questions

17

from any of the participants today that you would

18

like to share?

19

Okay, I see none there either.

So, with

20

that, let me officially close this roundtable on

21

collecting real-party-in-interest information.

22

at the USPTO thank you for your candid thoughts,

We

Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

Page: 153

1

and the agency will be following up on this

2

meeting today with more consideration on this

3

important topic.

4

I remind everyone listening and everyone

5

here in the room that we are keeping the written

6

comment period open until Friday, January 25th, so

7

you still have an opportunity to participate for

8

two more weeks through written comments.

9

see our Federal Register notice for more

10 11 12

Please

information on how to comply with that. And with that, thank you, and have a safe trip home.

13

(Whereupon, the PROCEEDINGS were

14

adjourned.)

15

*

*

*

*

*

16 17 18 19 20 21 22 Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net

Roundtable on Real Party in Interest Information

1

CERTIFICATE OF NOTARY PUBLIC

2

COMMONWEALTH OF VIRGINIA

3

Page: 154

I, Irene Gray, notary public in and for

4

the Commonwealth of Virginia, do hereby certify

5

that the forgoing PROCEEDING was duly recorded and

6

thereafter reduced to print under my direction;

7

that the witnesses were sworn to tell the truth

8

under penalty of perjury; that said transcript is a

9

true record of the testimony given by witnesses;

10

that I am neither counsel for, related to, nor

11

employed by any of the parties to the action in

12

which this proceeding was called; and, furthermore,

13

that I am not a relative or employee of any

14

attorney or counsel employed by the parties hereto,

15

nor financially or otherwise interested in the

16

outcome of this action.

17 18

(Signature and Seal on File)

19

Notary Public, in and for the Commonwealth of

20

Virginia

21

My Commission Expires: September 30, 2014

22

Notary Public Number 301609 Anderson Court Reporting -- 703-519-7180 -- www.andersonreporting.net