Wednesday, July 13, 2005

Universities oppose aspects of patent reform

In my article "Patent Reform 2005: Sound and Fury Signifying What," I suggest that the proposed "first inventor to file" system might not be in the best interests of universities. The following article, posted today, confirms this.

By Matt Krupnick (posted July 13)


Congress is tinkering with new rules that could reinvent the U.S. patent system, which brings in millions of dollars per year to UC Berkeley and other research universities.

Under the proposed law, a patent would go to the first inventor to file an application, the criterion used in most of the world's patent systems. The current U.S. system rewards researchers who can prove that they were the first to invent a device or process.

University of California officials have lobbied against the reforms, saying the first-to-file proposal could lead to shoddy research as scientists rush to beat the competition. The new law also would favor wealthy companies over public universities with limited budgets, said Carol Mimura, executive director of UC Berkeley's Office of Technology Licensing.

"If it's simply a race to the patent office, then whoever has the fastest DNA sequencer could win," she said. "From a scientific standpoint, it just doesn't feel fair."

University-generated patents have boomed since 1981, when Congress allowed academic institutions to license and commercialize new technology. The changes spawned a revolution in university research, somewhat shifting faculty away from their traditional focus on simply publishing their results.

Open to simple process

Despite many universities' opposition to the new proposal, some say they would welcome the simpler patent process.

At private Stanford University, which produced 128 patents last year, officials say the proposal would save the school time and money. Institutions often have trouble defending patents against challengers who say they invented a product first, said Katharine Ku, director of Stanford's patent office.

"Frankly, academics do not keep very good notebooks, so we often lose these (challenges)," Ku said.

The 10-campus UC system, which produced 424 patents last year, has generated more inventions than any other U.S. university each of the past 11 years.

UC's 6,600 active patents earned the university more than $93 million in the 2003-04 fiscal year, officials said. The patent process, which often takes five years or more, is not nearly as lucrative for faculty, but they say it helps keep their research practical and timely.

"Getting involved in the patent process helps you understand how the business world works," said Moraga resident Richard Mathies, a UC Berkeley chemistry professor who has about 30 patents. "The more you interact with industry, the better you understand which technologies they need."

Rush on research

Although most inventions earn little or no income, the UC system earned at least $1 million per year from each of 10 inventions as of 2003. The system's most lucrative patent, a hepatitis B vaccine from UC San Francisco, brings in more than $20 million per year.

Other fruitful inventions include two different types of strawberry developed at UC Davis and the nicotine patch, from UCLA.

Some researchers are wary of having to rush to the patent office with half-developed ideas or the possibility that another person will beat them to a patent on which they have worked for years.

"It's easy to imagine how someone could get hurt," said Carlos Bustamante, a UC Berkeley biology and physics professor who helped invent an "optical tweezer" that can move individual molecules. "People in the university are primarily interested in research. We are not businessmen."

University officials say they are well aware their concerns about patent reforms are going to be outweighed by the needs of corporations that churn out thousands of inventions per year.

Large technology companies have lauded the bill as the best way to eliminate "patent trolls," companies that file for patents simply so they can sue others for infringement.

Intel Corp., which holds more than 10,000 U.S. patents and has another 10,000 in the approval process, has been stymied by patent trolls that "hold companies hostage," said Intel spokeswoman Jennifer Greeson. The company spends up to $20 million a year dealing with infringement lawsuits, she said.

"The impacts are that we are unable to proceed with patents," Greeson said.

The change is long overdue, said Rep. Lamar Smith, R-Texas, the bill's author.

"I think it's important to have a (better) patent system because that's what keeps our economy going," he said. "We are now laboring under outdated patent laws."

Push to ease effects

University officials from around the country have lobbied Congress to ease the bill's effects on higher education, but the task has been difficult.

"At the end of the day, I think industry's voice will carry much more weight than ours will," said Scott Sudduth, UC's assistant vice president for federal governmental relations in Washington, D.C. "While we are relatively major players, this is a much bigger issue for them."

Even academics who oppose the first-to-file proposal in principle say they relish the thought of clarifying the process.

The differences between the United States' system and those of Canada, Europe and Japan can make life rough on inventors, said Brad Gibson, a chemistry professor at UC San Francisco and Novato's Buck Institute.

"Sometimes we lose the U.S. rights but keep the European rights, and it becomes a big problem," he said. "Anything that would simplify these rules, even though there would be some detriments, certainly would be a big help."


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