Tuesday, November 10, 2015

Do universities face a reputational cost in enforcing patent claims?

A post from Brookings investigates the role of universities as plaintiffs in patent infringement suits: Patent infringement suits have a reputational cost for universities .

Yes, WARF did come up, although the long history of WARF and patents was omitted. Thus, the post noted:

This is not the first time this university has asserted its patents rights (UW sued Intel in 2008 for this exact same patent and reportedly settled for $110 million).

There was no mention of the stem cell cases, or the much earlier margarine business.

The post brings up a Bayh-Dole hypothetical:

What if the text of Bayh-Dole had been originally composed to grant a conditional right to patents for federal research grantees? The condition could be stated like this: “This policy seeks to promote the commercialization of federally funded research and to this end it will use the patent system. Grantees may take title to patents if and only if other mechanisms for disseminating and developing those inventions into useful applications prove unsuccessful.” Under this imagined text, the universities could still take title to patents on their inventions if they or the U.S. Patent and Trademark Office were not aware that the technologies were being used in manufactures.

The post continues:

The reality that Bayh-Dole did not mandate such a contingent assignation of rights creates a contradiction between its aims and the means chosen to advance those aims for the subset of patents that were already in use by industry.

I should clarify that the predictor circuit, the blue-light diode, and the Kavcic detectors are not in that subset of patents. But even in they were, there is no indication that the University of Wisconsin-Madison would have exercised its patent rights with any less vigor just because the original research was funded by public funds. Today, it is fully expected from universities to aggressively assert their patent rights regardless of the source of funding for the original research.

No, the Boyer-Cohen patent was not mentioned.


Post a Comment

<< Home