Can anyone direct me to a searchable register of licenses and/or agreements in the US between a Patent owner and a licensee?

I look forward to your responses. Thank you.

Caroline Wood, IP Analyst, QinetiQ (UK)

14 Comments

  1. Caroline,

    Would that I could point you at something more useful than the USPTO's AHD (Assignment Historical Database - Link). More informatively, take a look at the guest post on PatentlyO back in March for attorneys lamenting the same problem (Link) followed by lots of bickering in the comments section.

    To the best of my knowledge, there is no perfect place to search this data in the United States. Many of the database vendors have integrated the AHD data into their offerings which is an improvement over searching the USPTO site, but nobody has perfectly captured all assignments or licenses. A very real world case study in this problem is trying to identify the patents owned or licensed to Intellectual Ventures. We know it's over thirty thousand, but good luck figuring out which thirty thousand they might be.

    Dominic

    P.S. Others: which database vendors have integrated non-USPTO filings into their database? Australia has a better recordation system for example, is anybody linking that data to US family members in their database?

  2. Dominic,

    Thanks for your reply.

    I have used the USPTO Assignments Database to track changes of ownership and it has been interesting to remind myself of its limitations by following your link to PatentlyO.

    I was hoping the US would have another register of Licenses, rather than Assignments, where I could discover the existence and, perhaps, dates (if not all the Ts&Cs, which would be nice!) of License Agreements between patent owner and licensee. Sounds like it doesn't exist.

    You make a good point about IV....

    Caroline

    1. Caroline,

      Warning: Layperson interpretation here! No attorney has reviewed this and this is absolutely not legal advice or opinion!!! Btw, to me assignment and license are synonyms even though there are legal distinctions.

      (I'm probably not saying anything you do not already know, but it is shocking how many folks outside of the patent information community do not understand these problems.)

      The net effect of this lack of assignment/license data is that it becomes difficult to present a two tier (high priority/low priority) infringement or market analysis. For instance, a client may want to know about only their competitors (high priority) with products on the market or a history of litigation when requesting an infringement search and opinion as those are the patent owners that can literally stop the importation of goods into the US. We (searchers and the subsequent attorney) can only tell them about the patents with facial assignments or later recorded assignments to those competitors, not about the patents with unrecorded assignments. The low priority competitors (those with patents but no products and therefore a lesser ability to stop the importation of goods) can be identified with a thorough infringement search, but that is often a search and opinion outside the budget of the client.

      All we can do is copy the modus operandi of the attorney in this situation and put lots of disclaimers on our work product. 

      Dominic

      P.S. One of my favorite things about the AHD data is the assignments to JP Morgan, Citibank, and Bank of America as collateral. Imagine how much that data would junk up the analysis if you were studying the patents in the financial industry! In fact, trying to look those up on the AHD system usually overloads the system.

      P.P.S. As a searcher, I love limiting a search to facial Assignments. For a smartphone search, there might be 150,000 relevant and potentially infringed patents that I would need to manually review and filter down to 1,000 for a requesting attorney. But if we limit it to Apple patents, there are only 600 patents to manually review and I might only present 30 of those to the attorney. Imagine the time and effort savings in that!

  3. In the absence of a comment from an attorney, I'd like to suggest that the reason we'll never see a patent license database is that patent licenses aren't covered by US law.  Once the patent is granted it's an ordinary asset, sales and reassignments don't have to be recorded at the USPTO, and any licenses would be covered by state laws and probably don't have to be recorded anywhere at all. 

    This reminds me of the problem database providers have historically had in finding out about patent litigation in the district courts - they've had to go to every court to get the information because there's no central registry of litigation.

    The best source of licensing information I've found is news databases and PR releases.  If the parties want to brag about their licensing activity, they announce it.  If they don't, we may never know.

    1. To follow-up on  Edlyn's comment (also in the absence of a comment from an attorney), I would like to add that another source for licensing activity ESPECIALLY when it involves parties that are public corporations would be EDGAR (from the SEC). As Edlyn mentioned that since patents are assets, any activity that could affect a corporations balance sheet (b/s) would be reported to the SEC.

      Cheers,

      CG

      1. Christine raises a good point but it is worth pointing out that companies are only required to file a form 8K when a "material event" takes place. By most definitions a material event is when one of several things happens but in the case of patent sales, purchases or licensing when the total assets of the company are either increased or decreased between 5-10%.

        For an example of the lengths some companies might go to in order to avoid reporting these events have a look at the Gametime IP blog by Patrick Anderson and some of his recent posts on the Micron/Round Rock/Intellectual Ventures relationship.

        http://gametimeip.com/2012/05/09/micron-retains-interest-in-round-rock-patent-monetization-proceeds/

        Thanks,
        Tony

        1. While proprietary company issues mitigate against one database, here are some additional sources that may be helpful if not already considered.

          1. KtMINE http://www.ktmine.co

          • Unlimited access to over 12,000 unredacted license agreements
          • Search using full text, agreement type, industry, effective date and eight additional filters
          • Each agreement summarized with all royalty rates, including tiers
          • Key licensing terms exportable to Excel
          • Royalty rate base statistics and analysis tools for agreement(s)
          • Pay-per-use access options http://www.ktmine.com/solutions/access-options

          The KtMINE FAQ explains how and where (vaguely) they get their information. The size of the database is a drop in the bucket compared to a wish for a comprehensive database but perhaps helpful for some research http://www.ktmine.com/frequently-asked-questions/.

          2. Dialog CLAIMS®/Current Patent Legal Status File 123 covers reassignments.

          3. The Intellogist Blog describes other systems that include reassignments: Are you catching reassigned US patents in your search? Posted on October 21, 2010 by Kristin Whitman http://intellogist.wordpress.com/2010/10/21/1684/.

          4. Zimmerman covers Assignments and Reassignments, noting how to find them in Lexis and other online systems. http://law.lexisnexis.com/infopro/zimmermans/disp.aspx?z=1816#ASS.

          5. Morningstar Document Retrieval: http://www.10kwizard.com/. While disclosure about patent licenses is not required by the U.S SEC unless material events as Anthony suggested, SEC filings are one source based on the material disclosure requirement when applicable. It may be easier to use a value-added EDGAR (fee-based) to pinpoint information more effectively or dig more deeply. The SEC EDGAR site has a fulltext search capability that covers the past four years http://searchwww.sec.gov/EDGARFSClient/jsp/EDGAR_MainAccess.jsp but doesn't include beyond those recent four years as do other EDGAR systems; nor does it have the variety of power search capabilities of other online systems. I use Morningstar Document Research (MDR), formerly 10K Wizard for searching SEC filings and find it useful for complex questions and because of options with regard to viewing and formatting results.

  4. Actually, there is a central source of information about US patent litigation.  CourtLink (LexisNexis), which is essentially the government courts database PACER, with some additional features, permits searching all federal district and appeals courts by patent number, as well as other fields.

    And I'm not an attorney either, but I will differ with Dominic:  reassignment and licensing are not equivalent, since a patent can be licensed without being reassigned.

    And Edlyn is correct: there is no database of US licensing information since these are for the most part private contracts and there is no requirement that they be recorded anywhere.

  5. I"m not a patent searcher and rarely participate in this forum. I hope you'll forgive the intrusion.  I enjoy the PIUG discussions and thought I would add a comment in case interested.  Dialog offers a tutorial:  How Do I Find Patent Licensing Information in Dialog’s Business Files? The link is http://support.dialog.com/howdoi/patents/54159.shtml. I use Dialog and other online systems for business research and patent licensing questions come up from time to time when I do company research.  Hope this is helpful information.

    Amelia Kassel | MarketingBase | Research is your first step

    amelia@marketingbase.com | 707 829-9421 |800 544-5924

    Training & Consulting

    http://bit.ly/o84CvH

  6. Hi all.  Thanks for the great discussion! 

    To Dominic’s point, I have to agree with Sara - an assignment and a license are two distinct things.  I think it is very important for all of us to have a good understanding of the differences.  Knowing the differences can, I believe, help us do our jobs better and help us better educate our clients. 

    It appears there may be some confusion so I’ll take a stab at pointing out the differences as I understand them… 

    An assignment is a direct measure of who owns a patent.  As you all know, this can be dynamic as patent portfolios are passed between companies as a result of mergers, acquisitions, etc.  The assignee, or owner of the patent, has the right to exclude others from practicing the claimed invention (not to be confused with the right to practice the claimed invention - that is a whole separate topic for discussion).  

    An assignee can allow others to use the invention claimed in their patent through a license.  A license can be granted exclusively (to one other party) or non-exclusively (to multiple other parties).  Licenses can even be granted involuntarily via a compulsory license wherein a governing body can force an assignee to let others use the claimed invention.  

    So, if Company A assigns their patent to Company B, B now owns the patent and A is out of the picture.  However, if A licenses the patent to B, A is still the owner but is simply allowing B to use their invention without the fear of an infringement lawsuit.  

    As alluded to in other posts, if an assignment change is recorded at the USPTO (which it does not have to be) the new owner can be identified via the USPTO Assignments database.  EDGAR is also a source of some assignment changes. 

    On the other hand, patent licensing deals are almost always confidential (especially the Ts&Cs) and, as Edlyn suggested, do not have to be recorded in a public manner.  As such, there is no comprehensive/reliable way for professionals such as us to determine which companies have taken or granted patent licenses.   

    Make sense to everyone?  Please let me know if I am out in left field here… 

    --Jason

  7. This is timely.  I also belong to LES so I am included in the linked-in discussion groups.  This popped up a couple of days ago. 

    http://www.currentpartnering.com/2012/05/08/currentagreements-deals-update-may-2012/ 

    Apparently this is a company/service that compiles and publishes licensing information relating to licensing in the life sciences. I see an embedded link for a subscription database.  The one person who replied to the post asked if there was a similar publication for "tech (non-pharma non-medical)."  The author said he wasn't sure.  Anyway hope this helps.

    Robert

  8. Dear all – Thanks, everyone, for this especially timely (at least it is for me) discussion. I hope it portends more (and more frequent) discussion threads on this Wiki, and I hope they attract as much engagement and truly useful information as this one.

    If anyone has access to a Bloomberg terminal, I've been told that Bloomberg Law's patent information is a good source for licensing deals, although it could well be true that Bloomberg is aggregating some of their info from sources already discussed here. Personally, I haven't had a chance yet to give our terminal a spin.

    Best,
    AJD

  9. All,

    I agree that this is more of a competitive intelligence question as alluded to in previous comments.

    Here are some other databases that I've used to look for Licensing/ Deals in addition to SEC filings:

    http://pharmalicensing.com/public/

    http://www.medtrack.com

    http://research.thomsonib.com/

    http://www.rdna.com/

    http://www.elsevierbi.com/deals

    the pipeline database formerly known as IDdb

    I think Thomson Pharma also has deal information.

    Hope that helps!

    To all entrepeneurs out there- whoever can consolidate all the licensing deals into a comprehensive database will get a lot of business!!!

    Monica

    1. Generally speaking all of these sources get most of their data from the SEC filings.  There is a vendor, Innovaro, (formerly Knowledge Express), that has a Royalty Rate Database that covers all industries.   They cater mainly to technology transfer organizations.  I'm not crazy about their interface or report formats and much of the deals are dated (FOI based information usually is).   I'd be interested in knowing if anyone has compared Medtrack deals to RDNA (Recombinant Capital)?