Two views of patenting done by the University of California

In the story below, UC Patents Generate Millions Annually, we have a textbook account of how the Bayh-Dole Act should work.

In the Eolas case, 399 F.3d 1325, 73 U.S.P.Q.2D 1782
(CAFC 2005), we have a story of how Eolas, operating under a license from UC, obtained a $500 million plus decision against Microsoft. However, in that case, we have learned that the professor involved at UC was directly and explicitly informed, before application filing, of prior art in the form of the Viola browser by Wei, but failed to tell the Patent Office about it. Separately, we see the W3C complaining to the Patent Office about the Eolas patent, stating that there was nothing new in the patent.

In the case, Eolas didn't really transform anything into an economically viable product. The people being sued did that. Whether this case will be good public relations for UC, or bad, as for the University of Rochester in the COX-2 case, remains to be seen.

from UC Patents Generate Millions Annually
by Rossana Mannan

Research under the University of California system is able to generate significant amounts of revenue as a result of the UC’s ownership of patents, especially if the research can be transformed into economically viable products and technologies.



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Many times, UC faculty, students and alumni establish companies whose products and services were developed because of research done at a UC campus. In the areas of communications, information technology and networking, one in six California research and development firms were founded by a UC scientist or engineer.

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“Getting a patent so that no one can use or sell them without the permission of the university brings in revenue and is good for [public relations] for the school,” said Alvin Virar, a patent and licensing officer from the UCI Office of Technology Alliances.

The article presents some numbers:

In the 2003-2004 fiscal year, the UC received $93.2 million from agreements it made with companies to license its patents. In 2004, the UC system held a total of 424 active patents, with UCI holding 174 of them.

Seven percent of the research done in California takes place on UC campuses, which produce approximately 41,000 new Ph.D.s each year. In the 2000 fiscal year, UCI spent $10 million on information technology and engineering research and $88 million on research in the biological sciences.

Although there is a quote about patents as an index of quality of research, one suspects that publications are still the main currency of the academic realm:

“Patents are one, though not the only, way of measuring the quality, scientific breadth, reputation and public service [value] of research conducted by a public university,” said Trey Davis, director of special projects in the UC Office of the President.

There is a mention of outsourcing to foreign countries (offshoring):

“More and more companies are scaling back their research and development,” Virar said. “With the outsourcing of jobs to other countries, more innovation and technology are coming from [college] campuses.”

Actually, government support of research has been DIMINISHING relative to private support. [refer to data previously mentioned in IPBiz from Henry Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technology, Boston: Harvard University Press, 2003.]