In a letter sent to the U.S. Patent & Trademark Office late last week, the American Antitrust Institute expressed its approval of the USPTO’s plan to implements rules requiring patent holders to provide more transparency regarding ownership interests in patents and patent applications. The AAI’s letter claims that, among other considerations, these transparency provisions would have positive effect on the licensing of standard-essential patents and in helping companies deal with assertions for patent assertion entities or non-practicing entities.
Back in November 2012, the USPTO issued a Notice and Request for Comment about a proposed regulation that would require greater public transparency about the ownership of patents and patents applications — i.e., requiring parties to provide information on real parties in interest, not just nominal owners. On January 11, the USPTO held a roundtable discussion surrounding this proposed rulemaking (for a good summary of the roundtable, see this post by PatentProgress). The deadline for the public to submit comments was this past Friday, January 25 — the date of the AIA’s letter.
In its letter, the AAI encourages the USPTO to consider requiring a filing in connection with every change in ownership, likening it to a requirement for recording changes in ownership of real property. The AAI asserts that such a recordation requirement can mitigate hold-up in the standard-setting process by providing SSO participants greater information about what patent owners may be benefiting from the standard-setting process, regardless corporate structure. The AAI also claims that the public, not just the SSOs and participants, could then find out the real parties in interest with respect to potential standard-essential patents before a standard is set, further reducing hold-up risks. On the FRAND front, the AAI notes that forced disclosure of real parties in interest could prevent companies from playing “ownership change tricks to evade or undercut antitrust agency conditions or remedies.”
The AAI’s letter also addressed how the USPTO’s proposal might alleviate assertions by patent assertion entities or help to “pierce the PAE veil,” specifically calling out Intellectual Ventures and MobileMedia as PAEs that routinely hide their patents during negotiations. According to the AAI, mandatory disclosure would help operating companies more adequately prepare for potential assertions by such PAEs, so that they are not surprised out of the blue.