Yesterday, Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Committee member Senator Mike Lee (R-Utah) introduced another patent reform measure called the Patent Transparency and Improvements Act of 2013, including a press release, section-by-section summary of the proposed legislation and legislation text. This joins other currently considered patent reform legislation such as that proposed by Senator Hatch (R-Utah) and that proposed by House Judiciary Committee Chair Goodlatte (R-Va), the latter of which is entering a mark-up phase.
The newly proposed Leahy-Lee legislation does not directly address standard essential patent issues. The legislation does have a provision that might benefit from a tweak to address standard essential patent issues. Specifically, the proposed legislation includes provisions to ensure that licensees of U.S. patents do not have those licenses canceled in bankruptcy. With standard essential patents, however, an obligation to a standard setting organization (SSO) often is not an actual license grant, but an agreement to negotiate a license on certain terms–e.g., fair, reasonable and non-discriminatory terms. This has raised the issue whether such SSO commitments follow the transfer of a patent to another entity, including following a patent purchased out of bankruptcy.
At least one bankruptcy court expressly considered and assured that the SSO obligation would follow patents purchased out of bankruptcy to avoid uncertainty on the issue, as explained in our prior post about Rockstar’s purchase of Nortel Network patents out of bankruptcy. Would there be a benefit to codifying this in the proposed legislation or is it better to have case-by-case development that extrapolates from the legislation if passed–e.g., would there ever be circumstances where SSO obligations should not follow a patent?
- Transparency of Patent Ownership
- Customer Stay
- Bad Faith Demand Letters
- Small business education, outreach, and information access
- Improved post-issuance procedures
- Protection of Intellectual Property Licenses in Bankruptcy
- Codification of the doublle-patenting doctrine
- Technical Corrections and Reports