Posts Tagged: "University of Wisconsin"

The ability to synthesize DNA through chemical processes is undoubtedly a marvel among modern technological advances and figures into a wide array of industry sectors… This Tuesday, July 3rd, marks the 34th anniversary of the issue of one of the seminal patents in the field of DNA synthesis. The lead inventor, Marvin Caruthers, is a member of the 2018 class of inductees into the National Inventors Hall of Fame.

A few months ago, a judge ordered Apple to pay the University of Wisconsin $506 million for infringing one of its tech patents. Last year, Carnegie-Mellon University won $750 million in a patent infringement lawsuit against Marvell Technology Group. With such big-money patent cases in the news, you might think that owning a patent can create a major windfall of profit for universities. While this has proven true for a handful of institutions, the truth is that most universities actually make little or no money from licensing the inventions they produce.  

Judge Conley ordered Apple to pay $506 million in damages to WARF for infringing on patents covering computer processing technologies. WARF’s original complaint, filed in January 2014, involved the assertion of a single patent: U.S. Patent No. 5781752, titled Table Based Data Speculation Circuit for Parallel Processing Computer and issued in July 1998… According to WARF’s original complaint, the development of the technology protected by the ‘752 patent is recognized as a major milestone in the field of computer microprocessor architecture and design. It lead to the election of Dr. Gurindar Sohi, the leader of the lab developing the technology, into the National Academy of Engineering in 2009.

At the time of an NIH study in 2011, algae-based biofuel production costs using conventional technologies were anywhere from $300 USD to $2,600 USD per barrel, much higher than the production costs of petroleum, which have since dropped dramatically in recent years. The economic disincentive associated with algae exploration when compared to petroleum is very real, but not the only challenge. Challenges preventing increased biofuel production from algae resources include the need to find more efficient algae harvesting techniques, more cost-effective oil extraction and effective use of land and water. Conquering these challenges should reduce the cost per barrel, but much research is still to be done. Despite the challenges that lie ahead, scientists and innovators remain optimistic.

Gulbrandsen’s chief complaint with the U.S. system centers around the fact that it has become enormously easy to challenge issued patents once they have been granted. In fact, organizations in pursuit of acquired technology are leveraging the kill-rate at the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), to negotiate lower licensing payments. Threats are made that patents will be challenged in Inter Partes review, “so that you amend the license and reduce the fees,” Gulbrandsen explained. “So, immediately you know that devalues the patent and devalues the license agreement that you’ve got.”

For the past 90 years WARF has promoted scientific research and innovation at UW-Madison and has earned more than $800 million in patent royalty revenues over the years and has generated $1.25 billion in revenue for the institution. WARF’s success spans well beyond the critical role Bremer played in the enactment of Bayh-Dole, and can be seen in how the University of Wisconsin-Madison stacks up against research universities from across the world. In 2013, UW-Madison placed 6th globally among all universities receiving U.S. patents that year with 160 patents; prostate cancer vaccines, clean compression engines and prosthetic device control were among the technologies protected.