[Federal Register Volume 85, Number 215 (Thursday, November 5, 2020)]
[Pages 70589-70591]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-24621]



Patent and Trademark Office

[Docket No. PTO-T-2020-0043]

Sovereign Immunity Study

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for Information.


SUMMARY: At the request of Senators Thom Tillis and Patrick Leahy, the 
United States Patent and Trademark Office (USPTO) is undertaking a 
study of the extent to which patent or trademark rights holders are 
experiencing infringement by state entities without adequate remedies 
under state law, and the extent to which such infringements appear to 
be based on intentional or reckless conduct. The USPTO seeks public 
input on these matters to assist in preparing the study.

DATES: Comments must be received by 5 p.m. ET on December 21, 2020.

ADDRESSES: You may submit comments and responses to the questions below 
by one of the following methods:
    (a) Electronic Submissions: Submit all electronic comments via the 
Federal e-Rulemaking Portal at http://www.regulations.gov (at the 
homepage, enter PTO-T-2020-0043 in the ``Search'' box, click the 
``Comment Now!'' icon, complete the required fields, and enter or 
attach your comments). The materials in the docket will not be edited 
to remove identifying or contact information, and the USPTO cautions 
against including any information in an electronic submission that the 
submitter does not want publicly disclosed. Attachments to electronic 
comments will be accepted in Microsoft Word or Excel, or Adobe PDF 
formats only. Comments containing references to studies, research, and 
other empirical data that are not widely published should include 
copies of the referenced materials. Please do not submit additional 
materials. If you submit a comment with business confidential 
information that you do not wish to have made public, please do so as a 
written/paper submission in the manner detailed below.
    (b) Written/Paper Submissions: Send all written/paper submissions 
to: United States Patent and Trademark Office, Mail Stop OPIA, P.O. Box 
1450, Alexandria, Virginia 22314. Submission packaging should clearly 
indicate that materials are responsive to [Docket Number: PTO-T-2020-
0043], Office of Policy and International Affairs, Comment Request; 
State Sovereign Immunity.
    Submissions of Business Confidential Information: Any submissions 
containing business confidential information must be delivered in a 
sealed envelope marked ``confidential treatment requested'' to the 
address listed above. Submitters should provide an index listing the 
document(s) or information that they would like the Department of 
Commerce to withhold. The index should include information such as 
numbers used to identify the relevant document(s) or information, 
document title and description, and relevant page numbers and/or 
section numbers within a document. Submitters should provide a 
statement explaining their grounds for objecting to the disclosure of 
the information to the public as well. The USPTO also requests that 
submitters of business confidential information include a non-
confidential version (either redacted or summarized) that will be 
available for public viewing and posted on https://www.regulations.gov. 
In the event that the submitter cannot provide a non-confidential 
version of its submission, the USPTO requests that the submitter post a 
notice in the docket stating that it has provided the USPTO with 
business confidential information. Should a submitter either fail to 
docket a non-confidential version of its submission or to post a notice 
that business confidential information has been provided, the USPTO 
will note the receipt of the submission on the docket with the 
submitter's organization or name (to the degree permitted by law) and 
the date of submission.

and International Affairs, at [email protected] or 571-272-9300. 
Please direct media inquiries to the Office of the Chief Communications 
Officer, USPTO, at 571-272-8400.

SUPPLEMENTARY INFORMATION: Several Supreme Court decisions have 
invalidated statutes that barred states' assertions of sovereign 
immunity in intellectual property (IP) disputes. In Florida Prepaid 
Postsecondary Education Expense Board v. College Savings Bank \1\ 
(Florida Prepaid), the Court found that the Patent and Plant Variety 
Protection Remedy Clarification Act, which had abrogated states' 
immunity from patent infringement suits, was unconstitutional. In 
College Savings Bank v. Florida Prepaid Postsecondary Education Expense 
Board (College Savings),\2\ the Court found that the Trademark Remedy 
Clarification Act, which provided that states could be sued for false 
and misleading advertising under section 43(a) of the Trademark Act, 
was unconstitutional. This year, in Allen v. Cooper,\3\ the Court ruled 
that the Copyright Remedy Clarification Act of 1990, which abrogated 
states' immunity for liability for copyright infringement, was also 

    \1\ 527 U.S. 627 (1999).
    \2\ 527 U.S. 666 (1999).
    \3\ 140 S. Ct. 994 (2020).

    In both Florida Prepaid and Allen, the Supreme Court made clear 
that Congress does have authority, in certain circumstances, to strip 
states of the immunity they enjoy under the 11th Amendment.\4\ Both 
decisions pointed to a line of cases, including Fitzpatrick v. Bitzer 
\5\ and City of Boerne v. Flores,\6\ holding that section 5 of the 14th

[[Page 70590]]

Amendment \7\ empowers Congress to abrogate state sovereign immunity in 
order to prevent conduct prohibited by section 1 of that Amendment,\8\ 
such as the deprivation of property without due process of law. In 
principle, Congress may abrogate state sovereign immunity to prevent 
the unconstitutional deprivation of an IP right.

    \4\ U.S. Const. amend. XI.
    \5\ 427 U.S. 445 (1976).
    \6\ 521 U.S. 507 (1997).
    \7\ U.S. Const. amend. XIV(5).
    \8\ U.S. Const. amend. XIV(1).

    Nevertheless, in both Allen and Florida Prepaid, the Court 
emphasized that some, but not all such deprivations are 
unconstitutional. A state's deprivation of property will violate the 
14th Amendment \9\ only if (1) it is ``intentional, or at least 
reckless'' \10\ and (2) the state does not provide an adequate remedy 
to redress the deprivation. Due process is not lacking where there is 
an adequate remedy in place.\11\

    \9\ U.S. Const. amend. XIV.
    \10\ Allen, 140 S. Ct. at 1004.
    \11\ Florida Prepaid, 527 U.S. at 643.

    In both cases, the Court found that Congress's abrogation of state 
sovereign immunity was not supported either by a record that showed a 
pattern of infringing conduct by the states \12\ or by consideration of 
whether there were adequate state remedies available for any 
infringement that does occur.\13\ Allen stressed that Congress was not 
precluded from passing a valid law in the future that abrogated state 
sovereign immunity for copyright infringement.\14\ It suggested that 
such a statute should ``link the scope of its abrogation to the redress 
or prevention of constitutional injuries,'' \15\ and that this linkage 
should be supported by a legislative record.

    \12\ Florida Prepaid, 527 U.S. at 645; Allen, 140 S. Ct. at 
    \13\ Florida Prepaid, 527 U.S. at 643-44; Allen, 140 S. Ct. at 
    \14\ Allen, 140 S. Ct. at 1007.
    \15\ Id.

    In a letter to the Director of the USPTO dated April 28, 2020, 
Senators Thom Tillis and Patrick Leahy asked that the USPTO study the 
extent to which patent and trademark owners experience infringements by 
state entities without adequate state law remedies. They further asked 
that the analysis include a study of the extent to which such 
infringements may be intentional or reckless. Finally, they requested 
that the USPTO provide a public report summarizing the findings of the 
study so that Congress can evaluate whether legislative action should 
be taken.\16\

    \16\ Senators Tillis and Leahy also requested the United States 
Copyright Office (USCO) to conduct a parallel study on copyright 
issues. See a Notice of Inquiry that the USCO published in the 
Federal Register (85 FR 34252, June 3, 2020) in connection with that 

    Request for Information: To aid in the study that Senators Tillis 
and Leahy requested, the USPTO invites written comments on the 
questions below. In responding to the questions, commenters are 
encouraged to explain the reasons for their responses when appropriate. 
In addition, the USPTO asks that commenters explain their interest in 
the study and the basis for their knowledge (e.g., the commenter is a 
patent and/or a trademark rights holder, or a state attorney general or 
other state official, or represents a state entity, such as a state 
university). Commenters need not respond to every question and may 
provide relevant information even if not responsive to a particular 
    1. Extent of asserted patent and/or trademark infringements by 
states or state entities:\17\

    \17\ As used in this Notice, ``state entities'' includes 
entities such as public state universities and state-owned entities 
such as transportation entities, and economic development entities.

    a. How frequently do rights holders assert that a state or state 
entity has infringed their patents or trademarks, either via lawsuits 
or through some other means?
    b. Has there been an increase in the number of assertions of patent 
and/or trademark infringements by states or state entities since the 
Supreme Court's decision in Florida Prepaid, which had invalidated a 
statutory abrogation of state sovereign immunity from patent 
infringement, and what empirical evidence is available to determine 
whether there has been a change over time? What metrics can be used to 
determine the frequency of state patent and/or trademark infringement?
    c. If you are an official of a state or a state entity, does your 
state track claims of patent and/or trademark infringement, and if so, 
how many such claims were asserted before and since 1999, (i) via 
lawsuits and (ii) otherwise?
    d. Do you anticipate that the Allen decision will result in a rise 
in the number of instances in which states and state entities will 
engage in, or be accused of engaging in, patent and/or trademark 
    e. Are you aware of state laws, regulations, and/or policies that 
either minimize or increase the likelihood that the state or a state 
entity will engage in patent or trademark infringement? If yes, can you 
provide copies of, or citations to, those state laws, regulations, and/
or policies?
    2. Information about particular instances of infringement:
    a. Please identify all instances you are aware of in which, since 
1999, a state or state entity was accused of infringing a patent or 
trademark. For each, please indicate what role, if any, you had in the 
dispute (e.g., you acted on behalf of a state through its Attorney 
General's office, or as counsel to a state entity; or you acted as or 
on behalf of a rights holder; or you were an observer), and for each 
    i. Identify the patent or trademark asserted to have been infringed 
and the state entity involved, and with respect to the trademark, 
indicate whether it was registered, either federally or with one or 
more states;
    ii. Describe how, when, and where the asserted acts of infringement 
were committed;
    iii. If the matter was the subject of a lawsuit, identify: (a) The 
court, (b) the names of the parties, (c) the claims asserted and the 
relief sought, and (d) the ultimate resolution, if any. In addition, if 
the litigation resulted in the issuance of judicial opinions, please 
provide copies of these if unpublished, and citations if published;
    iv. If the matter was not the subject of a lawsuit, clarify whether 
the state was nevertheless contacted about it, and if so, how did the 
state respond, and how was the matter resolved? If you are the rights 
holder or its representative, what was the basis of the decision not to 
litigate the matter?
    v. Were there allegations that the asserted infringement was 
intentional or reckless, and if yes, what was the basis for that 
    vi. Explain whether the asserted infringement was carried out 
pursuant to a state policy. If yes, and that policy is set forth in an 
official state document, please provide a citation to, or a copy of, 
that document.
    vii. Explain whether the asserted infringement was carried out 
pursuant to a state law or regulation. If yes, please provide a 
citation to that law or regulation.
    3. How defenses of sovereign immunity are asserted and treated in 
patent and trademark infringement cases:
    a. How do states and state entities typically respond to credible 
claims of patent and trademark infringement? Do they frequently assert 
defenses of sovereign immunity in litigation and in discussions with 
rights holders about claims of infringement? Do they frequently seek to 
resolve the claims outside of litigation, even though sovereign 
immunity would be available if the rights holder filed suit?
    b. Which state entities are entitled to assert sovereign immunity, 

[[Page 70591]]

pursuant to which state policies, laws, or regulations?
    c. Are there formal or informal state policies that require or 
permit states and/or particular state entities to assert sovereign 
immunity? Are there any policies that prohibit such assertions? If any 
such policies are set forth in official government documents, or in 
relevant laws, regulations, ordinances, or constitutions, please 
provide copies or citations.
    d. Are there instances in which states or state entities have 
explicitly waived sovereign immunity in patent and/or trademark 
infringement cases, and if so, under what authority? Alternatively, are 
there state laws, regulations, or policies that preclude such waivers, 
and if yes, please provide copies or citations.
    e. Are there instances in which a court has found that a state or 
state entity has waived sovereign immunity in patent and/or trademark 
infringement cases, and if yes, what were the bases of those findings?
    f. When states or state entities assert defenses of sovereign 
immunity in patent and/or trademark infringement cases, do courts 
generally accept these defenses? If courts reject these defenses, on 
what basis do they do so?
    g. What defenses other than sovereign immunity, if any, do states 
or state entities typically assert in patent and/or trademark 
infringement lawsuits?
    4. Other impacts of availability of sovereign immunity:
    a. In your view, do the outcomes of claims of patent and trademark 
infringement, whether asserted in litigation or otherwise, differ 
depending on whether the asserted infringement was carried out by a 
private party or a state or state entity, and, if yes, are such 
differences attributable to the availability of sovereign immunity? 
Please explain the basis for your view, and if it is based on 
particular instances in which there were claims of patent or trademark 
infringement, please describe those instances.
    b. In your view, does the availability of sovereign immunity as a 
defense in litigation lead patent and/or trademark rights holders to 
enter into licensing arrangements with states or state entities on 
terms that are more favorable than those granted to private licensees 
or to otherwise change their licensing practices? Please explain the 
basis for your view, and if it is based on particular instances in 
which the availability of sovereign immunity did or did not impact the 
outcome of licensing negotiations, please describe those instances.
    c. Are you aware of instances in which the availability of 
sovereign immunity as a defense in litigation has deterred patent and/
or trademark rights holders from commencing litigation against a state 
entity and/or from notifying it about an infringement?
    5. Nature and availability of state remedies:
    a. Are there causes of action under state law that may provide 
adequate remedies for patent and/or trademark infringement by states or 
state entities? For example, are any of the following causes of action 
available and typically asserted: State trademark infringement; takings 
claims, such as conversion or reverse eminent domain; tort claims; 
contract claims; or writs of trover, replevin, or detinue?
    i. If yes, are the elements of these causes of action and the 
associated remedies comparable to those associated with infringement 
actions brought pursuant to the Lanham Act \18\ and/or the Patent 

    \18\ 15 U.S.C. 1051 et seq.
    \19\ 35 U.S.C. 1 et seq.

    ii. Are you aware of instances in which damages were awarded in 
patent and/or trademark suits brought against states or state entities 
pursuant to such causes of action? If yes, please identify those 
instances and provide information about them.
    iii. In which state courts can a rights holder bring a patent or 
trademark infringement action against a state or state entity? Which of 
the following doctrines, if any, are impediments to doing so: Sovereign 
immunity, state law, federal preemption, or others?
    b. In cases of patent and/or trademark infringement by states and 
state entities, to what extent is injunctive relief available against 
state officials who act within the scope of their authority? Is such 
relief adequate to address the needs of patent and/or trademark rights 
holders whose rights are infringed?
    6. Other matters:
    a. Please describe any formal or informal policies that states may 
have for responding to claims of patent and/or trademark infringement, 
including policies regarding payments to or negotiations with rights 
holders. If these policies are written, please provide copies.
    b. When rights holders notify states or state entities of patent or 
trademark infringements informally rather than via lawsuits, do they 
typically do so through the Attorney General's office or through other 
officials? In cases in which the interactions are with offices other 
than the Attorney General, is the Attorney General's office typically 
    c. Do states or state agencies typically carry insurance policies 
that would cover patent or trademark infringement by state employees, 
and if so, would such coverage extend to intentional, reckless, or 
negligent infringements?
    d. Please identify any other pertinent issues that the USPTO should 
consider in conducting its study.

    Dated: October 30, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.

[FR Doc. 2020-24621 Filed 11-4-20; 8:45 am]