by Susan G. L. Glovsky of Hamilton Brooks Smith Reynolds
Patents are far more valuable than they ever have been. Yet, unlike real property, it can be difficult to determine patent ownership or accurately identify encumbrances even though patent value can exceed the value of a home or even an office building. Rights in real property are determined by legislation in each state, which provides for recordation of written transfers and security interests in real property. Legislation related to real property recordation provides a level of certainty in determining the true owner, provides protection for bona fide purchasers, and permits recordation of liens to satisfy debts owed by real estate owners.
This is not the case with patents. Because of an inadequate system for recordation, prospective purchasers, licensees, lenders, and even defendants in a lawsuit may have to take it on faith that the seller, licensor, borrower, or plaintiff truly owns, and has not previously encumbered, these patent rights.
Unless assigned, patent applications are owned by the inventor or inventors named in the application. The inventor(s) can assign ownership to another person or to a company. Thereafter, the assignee can further assign the application or, once issued, the patent. Any assignment must be in writing, and the assignment can be recorded with the United States Patent and Trademark Office. Recordation is voluntary. In the event of conflicting transfers of title to the same patent or application, the Patent Act gives the first purchaser a three month window in which to record, which takes priority over a subsequent purchase during the three month period, even though there was no constructive (through recordation) or actual notice of the assignment at the time the subsequent purchase was made. As a result, potential transfers that might have occurred in the three month period preceding an assignment that could trump that assignment may be unavailable when conducting any title search, leaving a potential purchaser with uncertainty and unacceptable risk.
Security interests in patents are to be recorded where UCC filings are made, based on state law. Unlike real estate, it is not always easy to determine the state in which a security interest in a patent has to be recorded. Once the state is determined, it is necessary to determine, under that state's law, whether recordation is made at the state or local level in order to search for any security interest that may be recorded. Lack of certainty concerning security interests can discourage lenders from providing needed loans.
The time has come to enact national legislation that provides clear record title to patent applications and patents. The value of patents is too great to continue with the present system. Moreover, patents are a federal right and should be addressed at a federal level. A national system would harmonize U.S. law with those of other countries, which generally have a national system for recordation of patent rights. Recently, the Patent Office proposed rules that would require disclosure of any assignee of patent rights. But these rules simply do not go far enough. Legislation is necessary in order to provide a comprehensive internationally recognized system that assures the recordation of patent title, security interests, and other encumbrances through filings solely in the Patent Office.
Taking the best from state systems for recording interests in real estate, at a minimum any legislation needs to:
Provide for recordation in the United States Patent and Trademark Office of transfers, security interests, exclusive licenses, corporate mergers, and liens that relate to rights in patent applications and patents as the sole location for recording those interests
Provide that a transfer is only effective against a bona fide purchaser once it is recorded
Determine priority among holders of transfers and security interests that are not recorded, including whether notice of unrecorded transfers is considered in determining priority
Provide a mechanism in Federal Court to remove a cloud on title to patent assets
Provide a mechanism (such as a lis pendens) that prevents transfer of the patent asset while a court action to determine rights in the patent asset is pending
Allow for dismissal of any lawsuit filed to enforce a patent, unless the record owner or record exclusive licensee is a party
The new rules proposed by the Patent Office have succeeded in focusing attention on recordation of patent rights, but the proposed rules do not go far enough. In order to provide a comprehensive system that addresses all the issues, Congress needs to enact legislation that solves all the problems in the current system.