Pub. 6 2011-2012 Issue 6

March/April 2012 21 Extraordinary Service for Extraordinary Members. Patents Section 261 of the Patent Act (35 U.S.C. § 261) governs ownership and transfer of patents and provides a federal filing scheme for protecting patent rights. This section also provides that priority rights in a patent obtained by “assign- ment, grant, or conveyance” may be preserved, as against a bona fide purchaser or mortgagee, only if the assignment was recorded in the United States Patent and Trademark Office (USPTO). Courts have reasoned that a security interest in a patent is not the kind of “assignment” that requires filing with the USPTO under the Patent Act. Instead, UCC filing is necessary. In re Cybernetic Services, Inc. , 252 F.3d 1039 (9th Cir. 2001) (security interest in a patent is not an “assignment” within meaning of federal patent statute; UCC filing is nec- essary); In re Tower Tech, Inc. , 67 Fed.Appx. 521 (10th Cir. 2003) (filing only with USPTO was fatal for secured lender). While filing under the UCC is necessary for perfection of security interests in patents, courts have held that such filing does not protect against future purchasers of patent rights. Courts have stated that a bona fide purchaser with a duly recorded assignment at the USPTO would defeat a secured lender that did not file in the USPTO. See Rhone-Poulence Agro, S.A. v. DeKalb Genetics Corp. , 284 F.3d 1323 (Fed. Cir. 2002). Because of this, it is advisable to record a security inter- est under the UCC to perfect the security interest and also to record the security interest with the USPTO to protect against future purchasers. Trademarks There are three classes of trademarks: federally registered marks, state registeredmarks, and common lawmarks. State registered marks and common law marks arise under and are generally governed by state law. For these, perfection is effected under theUCC. Federally registeredmarks, however, are governed by the LanhamAct, 15 U.S.C. § 1060. Similar to the Patent Act, the Lanham Act addresses assignments and, according to case law, security interests are not considered assignments. See In re Chattanooga Choo-Choo Co. , 98 B.R. 792 (E.D. Tenn. 1989) (a service mark is a UCC general intangible requiring the filing of a financing statement); In re Trimarchi v. Together Dev. Corp. , 255 B.R. 606 (D. Mass. 2000) (secured lender filed UCC financing statement with the USPTO rather than with the secretary of state; because this federal filing was improper, the lender’s security interest was unperfected and voidable in bankruptcy). Thus, UCC filing is necessary. As with patents, however, there is the problem of a subsequent purchaser and, to pro- tect against such purchaser, it is prudent also to record with the USPTO. Q Tangible Problems — continued on page 22