Last week, the Open Register of Patent Ownership (ORoPO) was launched, in the aim of creating a user-friendly and freely accessible database with information about which companies own which patents. If the database is a success, and it is of course early days, life may become much easier in determining who owns what when considering patent strategy. However, it is highly unlikely that the database will ever replace the official registers at national patent offices which will reflect the true ownership position, but which are known to contain errors and are expensive to keep updated for the patent owners.
Indeed, a report from the ORoPO Foundation stated that: “Various estimates from very well informed sources – including an assessment made by Yo Takagi, an Assistant Director-General at WIPO, … and David Kappos, former Undersecretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office – suggest that as much as 25% of the world’s patent ownership data may be inaccurate.”
Many of these inaccuracies may well be typographical errors and/or unregistered address changes, rather than changes of ownership per se, but such errors can still make it difficult to establish who to contact if wanting to license or buy a patent, for example. For some patents, however, ownership is not updated after a patent has been bought or sold. These inaccuracies can make it hard to approach patent holders, understand who owns rights that might be relevant to your business, etc.
Registering transfers can be an expensive business, often requiring translations of assignments into an official language of the relevant patent office, in addition to official fees payable to each patent office with which the change should be registered. Some companies therefore do not go to the trouble of registering ownership changes until or unless litigation arises. It is important that if this route is taken, the decision should be made in the full awareness that there may be consequences at a later time for not recording the changes promptly. In this regard, there can be penalties for not recording transfers at patent offices. In the United Kingdom these are:
- failure to officially register a change of ownership of a patent within a set time period of the transfer occurring can result in penalties for the new owner in any subsequent infringement case involving the patent in terms of the costs that can be recovered by them (although there is no impact on the damages that can be awarded); and
- if one transaction concerning a patent is not registered, a later transaction which is registered may take precedence, in some situations, even if the later transaction contradicts the first, unregistered, transaction.
ORoPO should therefore not be seen as an alternative to registering changes of ownership with the relevant patent office(s). The ORoPO Foundation hopes that the proposed database will make licensing patents easier, and so encourage innovation. The Open Register has the backing of many leading companies, including IBM, Microsoft, ARM and BAE Systems, showing that a currently unfulfilled need has been identified. However, the level of uptake of ORoPO will determine its success – the Open Register will only become a useful tool if a large enough number of companies use it and keep it updated. In addition, as the data collected are not verified (self-certification from the company claiming to own the patent in question is all that is required) the accuracy may be questionable. Given the worthwhile aims of the companies that have set up ORoPO, it would be good to see the database being a success in reducing the costs to license and transact in patents. However, time will tell if this is the case.