by Dennis Crouch
A bipartisan pair of Senators have proposed the “Pride in Patent Ownership Act.” The premise is that if you own a patent, you should be proud to own the patent — and actually record your ownership interest. The bill pushes this pride by requiring patent owners to record their ownership with the kicker that those who fail to record lose their right to punitive damages for any infringement that occurs prior to recordation.
If a patentee fails to comply … no party may recover, for infringement of the applicable patent in any action, increased monetary damages under section 284 during the period beginning on the date that is 91 days after the effective date of the issuance, assignment, grant, or conveyance with respect to the patent, as applicable, and ending on the date on which that issuance, assignment, grant, or conveyance is properly requested to be recorded.
The proposal also adds requirement anytime patent preparation, prosecution, or maintenance fees (including attorney fees) are paid by a “governmental entity, including a foreign governmental entity.” The applicant needs to provide a statement “describing the amount and source of funding” provided by the governmental entity. The provision would also retain the rule that an unrecorded interest is “void as against any subsequent purchaser or mortgagee” who purchases without notice of the prior conveyance.
The bill is co-sponsored by Senators Leahy (D) and Tillis (R) who are the chair and ranking member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property.
Senator Tillis: “The public has a right to know who is a patent’s true owner. Patents provide a limited term monopoly against the public, and it’s in the public’s interest and benefit to know who owns that monopoly. I’m a strong supporter of patent rights, but those rights have to be balanced against the public’s interest. This commonsense bill will achieve that goal and I look forward to working towards its passage this Congress.”
Senator Leahy: “One of the fundamental underpinnings of the patent system is transparency. In exchange for the exclusive rights over an invention granted by a patent, the public has a right to know who owns the rights to particular inventions. We are working to ensure a fair innovation system for small businesses, non-profits, and independent entrepreneurs who have a right to know, without expensive litigation, who has the exclusive patent rights over a particular invention.”
The pair also proposed a second proposal that they call “Unleashing American Innovators Act.” The proposal focuses primarily on outreach mechanisms for new entrants into the patent space and would also require a new Southeast Regional Office — perhaps in Sen Tillis’s home city of Charlotte.
For those who don’t know. Sen. Tillis was a computer systems specialist who worked for Wang Labs., PWC, and IBM (although mostly in management).