Paper of Record: Modernizing Ownership Disclosures for U.S. Patents

Abstract

National security concerns often arise between the U.S. and the People’s Republic of China (PRC), and routinely involve cutting-edge technology. These include the race to fifth-generation (5G) wireless mobile technology, cybersecurity, and IP theft; but traditionally they have not extended to patent policy writ large. As national security depends largely on innovative technologies, and patent policy fosters or hinders such innovation, the U.S. should modify its patent policies to recognize state-sponsored entities that can use U.S. patents to drain resources from domestic investment into new technologies. For instance, the United States Patent and Trademark Office (USPTO) currently has no mandatory recordation requirement to identify the attributable owners of patent applications. The USPTO receives and publishes only patent ownership information that the applicant or patent owner voluntarily submits, among myriad other concerns. Given that neither the Patent Act nor USPTO regulations require any recordation of assignee information, USPTO records provide poor notice regarding current ownership of patents. Thus, the U.S. government itself does not know how many U.S. patents international companies own, license, control, or could assert in U.S. federal court. While international agreements rightfully prohibit the USPTO from discriminating against foreign applicants, the U.S. cannot be blind to the fact that patents are already serving as a strategic tool for international competitors to harass or to leverage against American companies in court, draining their financial resources by extracting royalty fees and settlements that then flow into overseas coffers. And because the U.S. government has no effective means to record, or even internally track, the number or identity of patents international companies own, license, or could assert in even sensitive technologies, the extent and potentially negative ramifications of this problem are not well understood. We analyze the serious gaps in U.S. patent recordation law and propose basic recordation solutions that U.S. government, and the USPTO in particular, could implement to address, mitigate, or, at a minimum, better understand the magnitude of this issue.