“According to Senator Specter, universities receiving money under Bayh-Dole will allow universities to keep more royalties.”

http://community.nytimes.com/blogs/comments/dotearth/2009/03/26/energy-chief-seeks-global-flow-of-ideas.html

As far as the patents, one central problem is that early patenting – patenting of basic scientific concepts – tends to stifle innovation more than promote it. Patenting working prototypes and specific industrial processes, on the other hand, aids innovation by rewarding the inventor with a head start on any competitors.

For example, patenting the very concept of a silicon-based computer ship would stifle innovation, while patenting individual chip designs promotes innovation. Unfortunately, apparently due to scientific ignorance at the Patent Office, there have been very broad biotech patents granted, often coming out of academic-private partnerships. GE is also deeply involved in that entire area.

Another basic issue is that patents developed with taxpayer dollars should not be exclusively controlled by GE or any other private business entity – rather, such patents should be available under non-exclusive licenses, and as a gesture of goodwill, they could also be made available for free to developing countries – again, that would only apply to taxpayer-financed research – including all research done under the guise of public-private partnerships.

One example of that is the relationship between General Electric and the University of California via the QB3 public-private collaboration, involving venture capitalists, large biotech and pharmaceutical firms, and various UC research departments and other UC biotech affiliates in the region. This is similar to the BP relationship at UC Berkeley, the Energy Biosciences Institute, and various other public-private academic-corporate partnerships. They have diverse structures, but a common theme is that any patentable research is exclusively licensed to the corporate partners, with the school and the professor getting a percentage of the royalties. This leads to massive and unacknowledged conflicts of interest in academic research, which has been steadily spilling over into the news media in the form of more frequent fraud cases (Reuben and Pfizer, for example) and a rising lack of public trust in academic research (especially medical research).

The bottom line is pretty simple – there need to be divisions between academic research, which relies on the open exchange of information and transparency, and industrial research, which generates trade secrets aimed at giving the business a competitive advantage – wasted effort if the information is shared.

Obviously, the two worlds are incompatible in practice, and what has happened is that “trade secret mentality” has infected much of academic research, where “proprietary” is the new buzzword. This has all kinds of negative effects – delayed research, unwillingness to publish negative results, etc.

This has lead to a rather unhealthy situation in U.S. academic institutions and also in their private partners – something that neither member of the partnership wants to talk about. For example, who gets to join the “partnership”? What political factors go into that decision? It’s also not too encouraging to see the Treasury label their rescue plan a “public-private partnership”, either. The very concept is as ridiculous as a “military-civilian partnership” – what set of rules are followed? The most convenient ones?

If the Bayh-Dole patent laws of the early 1980s were repealed, it would still allow academics to engage in traditional consulting activities with private industry – but it would not allow either group to earn millions via their exclusive control of taxpayer-financed research.

— Ike Solem

My comments on the proposed amendment:

Damages: Appears to be acceptable. At least the judge has the flexibility to determine which “methodologies and factors” go into the damage calculation equation.

Willful Infringement Defense: Appears to be acceptable; at least the criteria for the defense are now statutory, not based exclusively on what has been “ever changing” court-based criteria.

3rd Party Statements. I’m not fond of this provision, but the amendments get rid of a very concerning language that would have allowed “other evidence” beyond “patents and publications” to be submitted. The USPTO, and especially the examining corps., doesn’t do well with “other evidence” that isn’t a “patent or publication.”

Interlocutory Appeals of Claim Construction. I’m still not fond of this provision for reasons expressed by Chief Judge Michel of the Federal Circuit. While the modified tries to restrict such interlocutory appeals to those “which may materially advance the ultimate termination of the litigation,” that could be potentially said of almost any claim construction decision. I also predict that the Federal Circuit will interpret this “materially advance” provision very restrictively, meaning they’ll likely repeatedly bounce such interlocutory appeals to discourage them, to the extent that the current situation won’t change (trust me, Michel is going to “ride herd” with the other Federal Circuit judges on this provision).

Failure to Disclose Best Mode. Again, this seems to make requiring the “best mode” or at least any incentive to disclose it superfluous. In fact, expect an increase in allegations of “unenforceability” (the statute by its language only explicitly precludes “invalidity” which is or could viewed as different from “unenforceability”) of patents for failure to disclose the “best mode” based on inequitable conduct.

Pilot Program for Certain District Courts. No comments.

That’s it from me on these proposed “modifications.”

… of the deckchairs on the titanic. The problem however is in the engineroom. Fundamentally patents are just a bad idea. No amount of lipstick on this pig is ever going to make it fly.

Fixing the patent system is actually quite easy. Abolish them.

With all due respect to you, you are wrong. Patent trolls file in Texas because of potential for huge jury awards, and prior to everyone filing there they not only could get lottery winnings but swift justice. To say that the Judges there understand patent law misses the point completely. The Court that understands patent law best is the District of Delaware. They are reversed less than any other district court by the Federal Circuit. Approximately 90% of their rulings are upheld on appeal, and they have about 100 active patent cases on their docket at any given time. So that is the best court to use if you are looking for judges that understand patent law and want a fair, just and certain result. The fact is that trolls never file in Delaware though, so obviously it isn’t because they are looking for the best judges.

We do agree though, tech companies are no better than Wall Street bankers. They want the deck stacked in their favor.

-Gene

With all due respect, the reason entities (both NPE’s and Corps) file in Texas is not because of the chance of a big award. The facts do not support that conclusion. The reason is that the Judges understand patent law and a patent holder is more likely to get a fair trial. Smart Judges, smart rules (no discovery games) and a jury pool that appreciates property rights are the reasons why patent holders bring actions there. In fact, most of the big tech companies arguing for patent reform (and venue reform) choose Texas when they are plaintiffs for these very reasons. They argue its inconvenient when they are defendants but convenient when they are plaintiffs! Isn’t is curious that the proposals all retain the ability for practicing entities to continue to choose Texas!

Tech companies are no better than Wall Street bankers.

Mark Twain was right, Congress is the “insane asylum for the helpless.” Just when you thought Congress couldn’t do anything dumber, it surprises you with a new level of rhetorical nonsense: “an interesting question.” What in the world is that supposed to mean?

I don’t know what the new venue provisions will look like because the language is still being finalized. I am not sure this is even necessary since the Federal Circuit decision in TS Tech. The answer is that Congress could change venue provisions to more clearly require cases to be brought in the most appropriate location. What has happened is so many patent plaintiffs (typicall so-called patent trolls) file suit in the Eastern District of Texas. Neither party is from there, no witnesses are from there, the technology was invented elsewhere, manufacturing is elsewhere, and maybe one or two infringing sales were there. That is a tenuous relationship that case law says doesn’t support venue. The reason to file in the Eastern District of Texas is because when there is a jury award it could be huge. That is not a reason to inconvenience a defendant, witnesses, make it harder to produce evidence and raise the cost in terms of attending hearings and the trial.

-Gene