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UC Vice Chancellor Concerned About Patent Reform & PTO

24 October 2007

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By Gene Quinn

The Senate Judiciary Committee held a hearding today on The Role of Federally-Funded University Research in the Patent System.  While there was speculation in some corners that this hearing may have been provoked by my article on how the new patent rules will erode the successes of the Bayh-Dole legislation, the hearing was primarily to discuss the fact that when a University's work is being done in a facility that is actually owned by the federal government, the University must return a portion of the royalties from the invention when those royalties exceed 5 percent of the facility's budget.  See Statement of Senator Patrick Leahy.

Nevertheless, one of those testifying at the hearing was Dr. Charles F. Louis, Vice Chancellor for Research, University of California, Riverside.  During his prepared statements Dr. Louis took the opportunity to at least briefly raise the questions about the ongoing patent reform legislation and the wisdom of the Patent Office's new rules on claims and continuations.  During his prepared testimony Dr. Louis stated (with emphasis added):

Because of financial constraints, universities do not have the resources to file patents on everything that is discovered by their researchers and must pick and choose the ones with the potential to be commercialized. Financial constraints are an important consideration for universities in fostering technology transfer and meeting the objectives of the Bayh-Dole Act. Any shifts in the current system could make it harder for universities to afford to engage financially in technology transfer efforts and would serve to undermine the Bayh-Dole Act's effectiveness.

UC is concerned for example, that some of the proposals being considered in the current debate over patent reform legislation could, if enacted in their current form, make it more difficult and more costly for universities and others engaged in technological advancements to continue to effectively make use of the patent system, as provided by the Bayh-Dole Act, and to ensure that advancements made in research laboratories reach the public. In addition, any rules promulgated by the U.S. Patent and Trademark Office that make it more burdensome and expensive for universities to obtain patents on their inventions, such as the new claims and continuation rules, would be detrimental to university technology transfer.

The uncertainty that these changes to the patent system will create for a university's patents has the potential to negatively impact private industry's interest in investing in the technology developed at universities. If it becomes more costly for universities to file and maintain patents, fewer patents will certainly be filed, resulting in fewer technologies that make it into the hands of the public. And if it becomes too risky for private industry to invest in patents because patent rights have become less certain under the law, the public's ability to reap the benefits of the initial federal investment in these inventions will be further curtailed.

Dr. Louis did not miss his chance while in Washington, D.C. to step up to the plate and make sure that at least the Senators on the Judiciary Committee are informed that the new rules that will go into effect on November 1, 2007 will be unequivocally bad for Universities and for the very mission of Bayh-Dole.  He even testified that UC manages over 7,500 active inventions in its portfolio, whith 80% of those generating some level of private or public sector interest and another 50% resulting in financial investment toward the development of a product.  Dr. Louis even specifically cited a number of tremendous success UC has had, including:

  • A vaccination for the potentially-fatal Hepatitis B disease (UCSF);
  • The Cohen-Boyer recombinant DNA patent held jointly by UC and Stanford University that helped to spawn the development of the biotechnology industry (UCSF);
  • Lung treatments for respiratory problems associated with premature births (UCSF);
  • A laser/water Atomic Force Microscope that helps scientists to better view and analyze different properties of matter at the nanoscale (UC Santa Barbara);
  • The minimally invasive Guglielmi Detachable Coil used to treat brain aneurysms (UCLA);
  • A plasma electric generator to create power without the use of fossil fuels (UCI);
  • Strawberry varieties that create an annual $1 billion-plus industry in California; and
  • The Nicotine Patch that assist smoking cessation (UCLA)

Dr. Louis' remarks should not come as a surprise given that year after year after year the Regents of the University of California obtain more U.S. patents than any other Univeristy, which means that they are going to be most negatively impacted.  Who knows what this will mean moving forward, but the message is starting to get out into the mainstream.  Hopefully it will not be to late to matter come next Wednesday at the Glaxo preliminary injunction hearing at the Eastern District of Virginia.

Perhaps I am dreaming, and perhaps I am over inflating my own importance and the importance of this blog in general, but if anyone is looking for something that they can do to help the cause of bringing the Patent Office back in check then consider sending a link to this blog post to anyone you know in a position of authority at any Univeristy that receives federal funding.  No need to stick your neck out and worry about the Patent Office taking its pound of flesh in retribution later, stay publicly anonymous and just send a link to get the word out.  It might not make any difference, but then again it just might. 

In the famous words of Justice Brandeis, "[s]unlight is said to be the best of disinfectants..."