Comments Submitted by AIPLA to USPTO Pursuant to Sovereign Immunity Study February 22, 2021

On February 22, 2021, AIPLA filed comments in response to the USPTO’s Sovereign Immunity Study: Notice and Request for Public Comment, 85 Fed. Reg. 70,589 (November 5, 2020) (Docket Number: PTO–T–2020–0043).

With respect to patent and trademark infringement, AIPLA believes that the record of reported cases provides support for abrogation of state immunity. With respect to trademark infringement, however, there are critical differences between those cases and patent and copyright infringement actions. Significantly, unlike patent and copyright infringement actions, which must be filed in federal court, trademark infringement actions can be filed in state courts. While some states appear to have waived immunity to trademark infringement suits in state court, other states appear to provide no remedies whatsoever for trademark infringement by a state actor. AIPLA believes the record supports limited abrogation of state immunity for trademark infringement in specific situations where state law fails to provide an adequate remedy.

AIPLA suggests that a longer and more comprehensive study may be needed to determine (a) the extent and number of patent infringement and trademark infringement claims against states that are not reflected in publicly available documents and (b) the extent of commercial harm caused by immunity or unremedied trademark infringement by state actors.

AIPLA believes that the number of published sovereign immunity cases involving infringement claims does not accurately reflect the extent or seriousness of actual patent or trademark infringement by state actors. Indeed, the existence of even this relatively small number of cases, in the face of Supreme Court precedent denying these causes of action, is telling. It indicates a potentially much larger problem that has surfaced in spite of being suppressed by this adverse mandatory authority.

Published opinions on the merits will not account for matters settled confidentially out of court or situations where the state actor voluntarily stopped the allegedly infringing activity. Reported cases may not account for situations where the owners of patent or trademark rights chose not to pursue enforcement due to the expense and perceived futility of suing state actors for infringement.

AIPLA believes that the state-law origin of trademark rights bears on the scrutiny that should be applied to state laws that provide a limited waiver of sovereign immunity or a non-judicial remedy for trademark infringement by state actors.

AIPLA asks the Office to consider the intentionality required by a state actor for patent or trademark infringement to rise to the level of unconstitutional deprivation of property without due process of law. AIPLA believes that the number of lawsuits (or lack thereof) in which willful infringement has been alleged or found against a state actor is not a reliable metric for evaluating the extent of willful infringement by state actors. 

To read the full comments, please download the file.