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Posts Tagged: "universities"

Now Is the Time to Reimagine University IP Education

Higher education is undergoing a seismic transformation as a result of a once-in-a-century pandemic. Administrators and faculty around the world are quickly overhauling how they provide instruction to students while trying to keep them on the path to graduation. With change in the academic space already underway, now is the time for colleges and universities to reinvent their innovation ecosystems and implement the intellectual property (IP) education methods and policies that students need to thrive in our knowledge economy.

Efforts to Villainize Biotech, Pharma over COVID-19 are Political Theater and Opportunism

If the objective is to beat this virus as fast as possible it simply isn’t helpful to talk about the compulsory licensing of drugs that don’t yet exist and the patents that can’t possibly be issued by the United States Patent and Trademark Office for at least the next two to three years. The COVID-19 crisis will be long since over by the time the first patent issues relating to anything specifically related to COVID-19. Yet somehow it is viewed as productive to demand compulsory licensing of vaccines, treatments and cures for COVID-19 that do not exist?

Using Legal Finance to Unlock University IP Assets

Litigation finance in the university context is thus particularly valuable. Even for smaller matters, litigation finance shifts spend off the university’s balance sheet, allowing it to put its own capital to use in its primary endeavors: Education and innovation. For larger matters, litigation finance shifts risk from the university—which, despite its diverse technology portfolio, may have only a small number of claims with attractive litigation prospects—to an entity with a much larger book of diversified risk across uncorrelated claimants.

Increasing the ROI from the Federal Labs

The biggest complaint about federal labs is it’s too hard to complete deals. Many federal labs must run pending agreements through byzantine departmental procedures. Companies wonder what’s taking so long and are surprised when negotiated points come back altered… One reason why universities outperform the labs is that many academic licensing officers come from the private sector. They understand the pressures companies are under to complete agreements.

When Universities Patent Their Research

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.  

St. Regis Mohawks, BIO send letters to Senate Judiciary slamming the unfair playing field of IPRs at PTAB

On Thursday, October 12th, a pair of letters addressed to the bipartisan leadership of the Senate Judiciary Committee were delivered in an attempt to inform Senators on that committee of various issues in play regarding the recent patent deal between multinational pharmaceutical firm Allergan and the sovereign St. Regis Mohawk Tribe. The two groups sending the letters represent stakeholders in the U.S. patent system coming from very different backgrounds who realize that there are fundamental flaws in the system created by inter partes review (IPR) proceedings which are carried out at the Patent Trial and Appeal Board (PTAB).

Sovereign Immunity of Patents: While a Strong Benefit to Patent Owners, These Patents Remain Subject to Traditional Challenges

The United States Patent Trial and Appeal Board (“PTAB”) recently dismissed another inter partes review (“IPR”) based on an assertion of 11th Amendment sovereign immunity.  This decision demonstrates the willingness of the PTAB to permit State agencies (such as public universities, medical schools, and research centers) to effectively shield their patents from the threat of post-grant proceedings at the PTAB.  While this is certainly a benefit to entities that can take advantage of sovereign immunity, it does not completely insulate government-held patents from any validity challenge, as more traditional approaches of invalidating patents still remain viable avenues for those accused of infringement.

University exception to fee shifting in PATENT Act won’t help Iowa State or University of Iowa

Senator Chuck Grassley (R-IA) added language to the fee-shifting provisions in the PATENT Act that would offer an economic hardship exception to fee shifting for “an institution of higher education.” The reason that Iowa State and the University of Iowa find themselves on the outside looking in is because of the way they have structured their patent ownership and licensing efforts. As is rather common, Iowa State and the University of Iowa place ownership of patents outside the institution and in the hands of a Research Foundation, which is a separate entity altogether.

Devil in Disguise: The Legend of the Villainous Patent Owners

It is truly a shame that so many have bought into the demonization of patent owners without any critical thought. In order to believe the narrative emanating from certain Silicon Valley giants you would have to believe the existence of helpless multinational, multi-billion dollar companies on their knees and wholly incapable of defending themselves against despicable independent inventors, diabolical universities, and monstrous scientific researchers. After all, looking to find a cure for cancer, or trying to figure out how to clean up the environment, or invent the next great kitchen gadget that will be the darling of QVC by definition makes someone vile, immoral, corrupt and down right sinful! A real devil in disguise!

Flawed survey erroneously concludes patent licensing does not contribute to innovation

There are a variety of problems with this paper, the conclusions reached and the methodology. Perhaps the largest problem is that Professors Feldman and Lemley rely on subjective evidence rather than volumes of objective evidence that contradict the self-serving responses from those who are licensing rights they are already infringing. What else would you suspect from a homogenous subset of individuals who collectively don’t like the patent system very much? Collective bias seems a far more likely answer as to why there is “near unanimity,” as the Professors claim. Even so, how is it possible that any group could ever achieve near unanimity about anything? The fact that there was near unanimity demands one to question whether there is a bias or flaw in the survey, yet no such inquiry seems to have been made.

Patent Haters Take Notice! University Innovation Fuels Robust Economic Activity

But how could Universities ever be characterized as non-practicing entities in the first place? If we are going to be intellectually honest there is no way you can characterize Universities as non-practicing entities. University innovations have laid the foundation for thousands of startup companies since 1980; in fact well in excess of 7,000 startup companies have been formed. These startup companies are not just high-tech companies, they are the highest tech companies based on the most cutting edge research and innovation our country has to offer. These companies are not imaginary or mythical, but rather they are real, tangible and operating companies; they exist! These startup companies are also U.S. formed companies that are located in the U.S. and employ U.S. workers. Now that is a jobs plan if I ever saw one!

Top 5 Post AIA Implementation University Considerations

Considered by many as the most comprehensive revision to the United States patent system in over 50 years, the America Invents Act (“AIA”) represents progressive legislative reform intended to align U.S. patent policy with global precepts, i.e., systems which reward the “first-to-file” a patent application. Many AIA provisions modify or completely change the former first-to-invent (“pre-AIA”) U.S. patent system, with the most immediate and conspicuous AIA component?the establishment of a filing-based regime as of March 16, 2013?serving as the hallmark and mark of U.S. patent reform.

Nonetheless, having only enjoyed 3-months of the AIA in its entirety, it is still too early to appreciate the de facto impact of this nascent legislation. The AIA has nevertheless ushered in transitional strictures that have uniquely placed research institutions in an ostensible patent?policy “reformation” with respect to technology evaluation and knowledge translation. While the pervasive nature of this new patent regime imparts an array of university-based concerns, the following Top 5 considerations are intended to reengage university professionals and employees with patent reform concepts and concerns during the initial “aftermath” of the AIA.

University Tech Licensing Has Substantial Impact on Economy

In the case of product sales, 58 institutions (31 percent of the 186 respondents) reported that 2,821 of their licenses paid $662 million in running royalties based on $37 billion in product sales, implying an average royalty rate of 1.8 percent. In the case of startups, 66 institutions (35 percent of the 186 respondents) reported employment of 24,653 by 1,731 operational startups, an average of 14 employees per startup. Assuming all 3,927 startups still operational averaged 14 employees, total employment would have been 55,929.

Plucking the Golden Goose Won’t Help Patients

Several public interest groups recently filed a march in petition under the Bayh-Dole Act asking NIH to force Abbott Laboratories to license its competitors for the production of Ritonavir, a drug used to treat AIDS.  Drug developers face a daunting task. For every 5,000 drugs tested, about five proceed to clinical trials. Perhaps one is eventually approved.  That one must not only pay for itself, but for all the company’s other drugs that died along the way. This grim math eludes the petitioners.

Universities: Get One More Year on your PCT Patent Filing

Scientifically speaking, there is really very little time the point in time that work in a university laboratory is concrete enough to call “an invention” and capable of description in a patent application until the 30-month deadline to pursue rights in various countries around the world. What that means is that universities are constantly faced with a difficult decision. Do they undertake the expense of seeking patent protection in a variety of locations or do they forego the invention? This decision is particularly problematic for universities engaged in the life sciences where there is of necessity a very long time horizon from conception of the invention to even knowing whether there is a legitimate opportunity for commercialization.