Patent data is notoriously messy, and difficult to work with. There are errors, especially misspellings in many of the fields that patent analysts are called on to examine. Subsequently, the topic of data cleanup has been a subject on this blog several times over the past few years. It is nearly impossible to conduct meaningful patent analysis when there are fundamental errors in the data that is being studied, so the critical nature of starting with clean data in patent analytics can not be overstated.
When talking about data cleanup with patents the field that is always at the top of the list to be concerned with is the patent assignee field. As I have mentioned previously, while there are many good approaches to standardizing patent assignees there is no one solution that completely addresses the issue of developing a comprehensive list of which organizations own patent documents in any given area. One aspect of the problem are the misspellings, but perhaps even more importantly there is no standard for reporting changes in ownership when patent assets change hands.
In the United States, for example there is no absolute requirement that patent (re)assignments need to be recorded with the USPTO unless the asset is going to subsequently be used in litigation. There is also a significant difference between licensing rights to an invention covered by a patent document, and a complete assignment of the patent document. The Fish and Tsang website provides some details on the difference between licensing, and assigning patent rights:
An important corrolary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be signifcant advantages. One major advantage is that the patent holder is “necessary and indispensable” to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.
So, as with many patent related aspects, absolute patent ownership is a messy, and potentially complicated problem. There have been several attempts at bringing some clarity to this particular issue both by the world’s patent offices, and by individual patent owners. For instance, one of the objectives originally pursued by the USPTO in conjunction with a recent strategic plan included a provision for increased patent transparency, but the Office eventually moved away from this, and opted to have Congress address the issue. At the time USPTO Deputy Director Michelle Lee said the following about the decision:
“It’s still a priority for the administration to increase the transparency of patent ownership information,” she said. “We heard from a number of stakeholders that they’re looking ahead at the legislation, and actually perhaps it might make more sense to address [the issue] via legislation rather than administrative action, and we’re supportive of what our stakeholders want to do and what makes sense.”
On the corporate side, several companies, most notably Microsoft have begun publishing lists of all of the patents that they have created, or purchased. The Microsoft Patents page provides the following explanation for why they taken this step:
Microsoft is committed to responsible intellectual property management, including the creation of a healthy patent ecosystem around the world that promotes and encourages innovation. One component of a well-functioning patent system is clarity around what entity is the real party in interest for a particular patent. Increased transparency around ownership reduces the likelihood of opportunistic behavior and gamesmanship by patent holders and helps facilitate licensing.
To demonstrate our commitment to transparency, published below is a list that includes to the best of our knowledge all issued patents that Microsoft currently owns, either directly or through subsidiaries, along with a tool for assisting in review of the list. The list includes worldwide issued patents that Microsoft has filed and prosecuted, as well as patents that we have acquired over time. In addition, the list contains some patents that have lapsed but that form a part of our historical portfolio.
To add to these efforts Nigel Swycher, CEO of Aistemos is leading a group that is looking to explore the market need, and interest in solutions to the problem of patent ownership transparency. Nigel provided the following thoughts on the effort, and is looking for organization to take a brief survey to help gather feedback on the problem:
There is wide ranging support for the view that patents are valuable assets, and that there should be greater levels of engagement from the banks, insurers and the financial markets more generally. The starting point in the evolution of all asset classes is however the need for markets to be establish who owns what.
You would think that this is a no-brainer for patents – a registered right with professionally managed registries, tasked with the responsibility for maintaining records of patent owners. The actual position is very different. The information on patent registers is inaccurate. There are many reasons for this, ranging from data quality issues (there are 28 patents recorded in the name of _!) to the fact that it is not mandatory to record assignments, and many companies do not. In between, there is legal ambiguity (CSR is recorded on many patents in the world, and it is for the searcher to decide whether this is a Bluetooth company in Cambridge, a railway company in China or a mining company in Australia).
Plans are underway to improve this position and Aistemos is conducting a survey to test awareness of the issue and the appetite for a solution. Please take 5 minutes to complete the survey and to circulate it to your network. The aggregated and anonymized responses will be published a part of a report next month.
The survey can be found at: https://www.surveymonkey.com/s/patentdata . For additional information on the survey, or the initiative contact Nigel at firstname.lastname@example.org.
Proper patent analytics requires accurate data, but there are also bigger issues around the need for more transparency in the patent ownership field. If you are concerned about this issue take five minutes and respond to the survey.