Real Property in Interest Roundtable

Under Secretary of Commerce for IP & Director of the USPTO David Kappos

January 11, 2013

Real-Party-in-Interest Roundtable

Remarks Prepared for Delivery

Good morning, everyone. Welcome to the United States Patent and Trademark Office, and thank you for coming. Also, Happy New Year! Each of these past few years has brought some pretty exciting and far-reaching changes to our IP laws and infrastructure, and 2013 promises to be no exception. As always, your input is extremely important to us. Looking back over the past few years, I really believe roundtables like this one-and the America Invents Act Roadshows we conducted last year-have been indispensable in making us a more transparent and user-friendly organization. We benefit from it, you benefit from it, and the American people from it. This kind of dialogue is a win-win all around.

Of interest to us today is your input on our proposal to collect "real-party-in-interest", or RPI, information on patent applications and patents-specifically, do you agree that we should do it, and if so, what are your thoughts about how we can do it, and using which of the definitions we proposed in our Notice of Public Rulemaking.

At the macro level, our perspective is simply that the marketplace can't work effectively unless innovators know what a patented invention covers and who is holding it. We need as much transparency as possible in order to get IP rights into the hands of those who are best able to make investments, create jobs, drive growth, and generate profits. This new RPI initiative can have several benefits, not only improving the marketplace for innovation, but also reducing gamesmanship in litigation strategies, and also improving the operations of the USPTO. With a more complete ownership record:

  • The public would have a more comprehensive understanding of what patent rights are being held and maintained by various entities.
  • The financial markets would have more complete information about the valuable assets being generated and held by companies.
  • And inventors and manufacturers would have a better understanding of the competitive environment in which they are operating, allowing them to more efficiently obtain and allocate the resources they need.

RPI information would also benefit the USPTO, in several critical ways:

  • First, it would enable our Patent Trial and Appeal Board to identify potential conflicts of interests.
  • Second, it would alert the Board to potential statutory bars to the proceeding.

To that end, we propose that the petitioner must certify at the time of filing a petition that he or she is not estopped from requesting an inter partes (IPR) or post-grant review (PGR) of the patent. In turn, we propose that the patent owner may file a preliminary patent owner response within two months from the docketing date of the petition, setting forth reasons why no IPR or PGR should be instituted.

Who constitutes a real-party-in-interest or privy is a highly fact-dependent question, especially on the issue of whether a party who is not a named participant in a given proceeding nonetheless constitutes a "real party in interest" or "privy" to that proceeding. Courts and commentators agree that there is no "bright-line test" for determining the necessary quantity or degree of participation to qualify as a "real party in interest" or "privy" based on the control concept. Accordingly, the USPTO has not enumerated particular factors regarding a "control" theory of "real party in interest" or "privy" in the proposed rules. Instead, to resolve an RPI or privy dispute that may arise during a proceeding, our Board plans to consider each case on its specific facts.

In sum, the USPTO believes the proposed rules we're discussing today provide (i) petitioners the ability to establish standing; (ii) patent owners the opportunity to challenge the petitioner's standing in appropriate situations; and (iii) the Board the flexibility to consider the specific facts and relevant case law in resolving a standing dispute.

We want nothing to stand in the way of transparency. And with this roundtable today, we want to hear your thoughts on how we can improve transparency about RPI. We welcome and encourage your comments on the definitions we've proposed, as well as the suitability of other definitions or standards.

Thanks again for your participation, and now I'd like to turn it over to our very capable chief economist, Stu Graham.

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