Friday, December 09, 2005

ASEE Prism on patent reform

The November 2005 issue of the American Society for Engineering Education Prism has an article on patent reform.

It touches on "first to file" and oppositions, but does not mention fee diversion or injunctions.

Of "first to file," there is a suggestion that this is a hybrid:
The draft of proposed legislation circulating at press time actually called for a "first-inventor-to-file" system. This language is meant to imply that the new system would be somewhere between first-to-invent and first-to-file, explains Carl E. Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation (WARF), the patent management organization for the University of Wisconsin, Madison. "It is a hybrid version, but it still creates a race to the patent office that wasn't there before," he says. I don't really think the proposal is a hybrid. I do think that calling it "first inventor to file" does indicate one has to file an invention, and one is not going to get a patent just because one files first. To simply refer to the proposed system as 'first to file' might imply that one could file on another's invention and obtain a patent, and that is not the case under present or proposed law, he said. That is to say, only one who actually invents can obtain patent protection. Thus, I believe Mr. Gulbrandsen is incorrect about the hybrid concept.

One has the following text: None of the universities that Prism contacted was willing to go on record about H.R. 2795, saying that the topic was too controversial. Aren't universities supposed to be at the cutting edge, not only of technology but also of political thought?

"University inventors typically are faculty members who first publish in academic journals and later consider whether to file to obtain a patent," [huh? I don't think so.] wrote the associations in their joint statement. "Before filing a patent application, universities often need time to consider the potential commercial application of a basic research discovery, which may not be obvious at the point of discovery, and to assess the receptivity with the commercial sector to licensing any resultant patent for development. All such practices are accommodated in a first-to-invent system but could be could be compromised in a first-inventor-to-file system."

There is discussion of the work by Graham and Harhoff, otherwise discussed in a different light by Joseph Hosteny.

One has the following: "It is increasingly in the university's interest to challenge a patent," Graham says, and opposition is a tool likely to be more palatable to academia's higher-ups, who understandably rankle at the thought of spending $4 million in litigation.

We have come a long way with Bayh-Dole, and it's not all necessarily good when universities think that participating in oppositions is a good thing. Ditto the University of Rochester's COX-2 litigation.

Once Senator Hatch suggested patent reform was a back burner issue, it was clear that H.R. 2795 wasn't going anywhere this session. We have a major disagreement on injunctions (between pharma and computer) and a separate disagreement on "first to file" (between bigger companies and smaller players). Don't look for anything this time around. The one thing that would really help (ending fee diversion) isn't in the cards either.


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