Innovation Alliance Statement on the Pride in Patent Ownership Act
Bill As Drafted Would Have Unintended Consequences and Give a Windfall Benefit to Bad Actors in the Patent System
WASHINGTON, D.C. – Innovation Alliance Executive Director Brian Pomper issued the following statement on the Pride in Patent Ownership Act, which is the subject of a hearing today in the Senate Judiciary Subcommittee on Intellectual Property:
“While the bill’s goal of increasing transparency in the patent system is welcome and important, we are concerned that the legislation as currently drafted would have unintended consequences, for small inventors and others, and would ultimately work to undermine innovation. Accordingly, the Innovation Alliance cannot support the Pride in Patent Ownership Act in its present form.
“As written, the bill would prohibit any patent owner who fails to record any change in certain rights or interests to a patent with the U.S. Patent and Trademark Office within a 90-day period from collecting enhanced damages from a willful infringer. We have a few concerns with this approach that we hope can be addressed as the bill moves through the legislative process.
“First, there is no apparent connection between the infraction of failing to record a change in rights or interests to a patent and the penalty of foregoing willful damages. That is especially concerning given that prohibiting willful damages would give a windfall benefit to a truly bad actor, one guilty of purposely and willfully infringing a patent in bad faith, due to an unintentional honest mistake or oversight on the part of a rights holder. As one commentator noted, that would be like the police refusing to respond to a report of burglary or trespassing because a homeowner had failed inadvertently to record their deed properly.
“Second, for resource-constrained small inventors, entrepreneurs with multiple funders and investors, or even large companies engaged in a complex transaction, we fear the 90-day period is too short. That is compounded by an additional concern – the lack of any ability to cure honest mistakes in failing to meet this timeline. A mechanism to allow recordation after the 90-day period without penalty in cases of an honest mistake or oversight would be a welcome addition to this bill.
“Transparency in the patent system is an important topic that deserves the attention of policymakers. The Innovation Alliance supports increased transparency in patent ownership and would welcome the opportunity to work with the cosponsors to improve this legislation by addressing the concerns detailed above.”
ABOUT THE INNOVATION ALLIANCE
The Innovation Alliance represents innovators, patent owners and stakeholders from a diverse range of industries that believe in the critical importance of maintaining a strong patent system that supports innovative enterprises of all sizes. Innovation Alliance members can be found in large and small communities across the country, helping to fuel the innovation pipeline and drive the 21st century economy. Learn more at www.innovationalliance.net.