Fairplay or Greed: Mandating University Responsibility Toward Student Inventors

Over twenty years have passed since the enactment of The Patent and Trademark Law Amendments Act (Bayh-Dole Act) and universities continue to struggle with their technology transfer infrastructures. Lost in that struggle are those who could be considered the backbone of university research: the students. Graduate and undergraduate students remain baffled by the patent assignment and technology transfer processes within their various institutions. Efforts should be undertaken by universities to clarify the student\u27s position in the creative process

Fairplay or Greed: Mandating University Responsibility Toward Student Inventors

Over twenty years have passed since the enactment of The Patent and Trademark Law Amendments Act (Bayh-Dole Act) and universities continue to struggle with their technology transfer infrastructures. Lost in that struggle are those who could be considered the backbone of university research: the students. Graduate and undergraduate students remain baffled by the patent assignment and technology transfer processes within their various institutions. Efforts should be undertaken by universities to clarify the student\u27s position in the creative process

Standing with a Bundle of Sticks: The All Substantial Rights Doctrine in Action

This Article provides an overview of the Federal Circuit’s all substantial rights doctrine. Surveying decades of case law, this Article seeks to clarify this confusing area of the law and set out the essential rules for those engaged in patent licensing, patent assignment, and patent litigation. This Article begins by explaining why effective ownership of a patent is critical to standing, and then describes the framework through which courts determine whether a party is, in fact, in possession of all substantial rights and is therefore the effective owner. While there are many factors that courts may consider, certain rights take priority in this analysis, the right to enforce being the most important. This Article concludes by providing guidance on how to structure an agreement to ensure that these rights are allocated predictably and reliably to convey effective ownership of the patent

Sovereign Immunity for Rent: How the Commodification of Tribal Sovereign Immunity Reflects the Failures of the U.S. Patent System

Last year, a Fortune 500 pharmaceutical company attempted to rent the sovereign immunity of an American Indian tribe in order to shield its patents on a dry-eye drug from invalidation by generic competitors in inter partes review. Pharmaceutical firms are notorious for pursuing unconventional methods to extend the duration of their patents and, in this sense, the maneuver is unsurprising. The exploitation, however, of an historically disenfranchised community with limited economic opportunities is particularly unsettling. This Article will provide, firstly, a factual summary of the legal background of this case; secondly, a review of the February 2018 decision of the Patent Trial and Appeal Board (“PTAB”) to deny the application of tribal sovereign immunity in this case; thirdly, a review of the July 2018 decision of the U.S. Court of Appeals for the Federal Circuit, affirming the PTAB’s decision; fourthly, a discussion of the ways in which the precedent set by Allergan’s maneuver may adversely affect consumer welfare by undermining the process of inter partes review; fifthly, an analysis of the history of tribal sovereign immunity and how its exploitation in this case reflects the historic oppression of American Indians; and finally, strategies to deter such transactions from recurring in the future

How redeployable are patent assets? Evidence from failed startups

Entrepreneurial firms are important sources of patented inventions. Yet little is known about what happens to patents "released" to the market when startups fail. This study provides a first look at the frequency and speed with which patents originating from failed startups are redeployed to new owners, and whether the value of patents is tied to the original venture and team. The evidence is based on 1,766 U.S. patents issued to 285 venture capital-backed startups that disband between 1988 and 2008 in three innovation-intensive sectors: medical devices, semiconductors, and software. At odds with the view that the resale market for patented inventions is illiquid, we find that most patents from these startups are sold, are sold quickly, and remain "alive" through renewal fee payment long after the startups are shuttered. The patents tend to be purchased by other operating companies in the same sector, and retain value beyond the original venture and team. We do find, however, that the patents and people sometimes move jointly to a new organization following the dissolution of the original venture, and explore the conditions under which such co-movement is more likely. The study provides new evidence on a phenomenon-of active markets for buying and selling patents-underexplored in the strategy literature and consequential for both entrepreneurial and established firms.Accepted manuscrip

The nexus between science and industry: evidence from faculty inventions

Against the background of the so-called European paradox, i.e. the conjecture that EU countries lack the capability to transfer science into commercial innovations, knowledge transfer from academia to industry has been a central issue in policy debates recently. Based on a sample of German scientists we investigate which academic inventions are patented by a scientific assignee and which are owned by corporate entities. Our findings suggest that faculty patents assigned to corporations exhibit a higher short-term value in terms of forward citations and a higher potential to block property rights of competitors. Faculty patents assigned to academic inventors or to public research institutions, in contrast, are more complex, more basic and have stronger links to science. These results may suggest that European firms lack the absorptive capacity to identify and exploit academic inventions that are further away from market applications. --academic inventors,university-industry technology transfer,intellectual property rights

Make, Buy, Organize: The Interplay between Research, External Knowledge, and Firm Structure

We bridge current streams of innovation research to explore the interplay between R&D, external knowledge, and organizational structure–three elements of a firm\u27s innovation strategy which we argue should logically be studied together. Using within-firm patent assignment patterns, we develop a novel measure of structure for a large sample of American firms. We find that centralized firms invest more in research and patent more per R&D dollar than decentralized firms. Both types access technology via mergers and acquisitions, but their acquisitions differ in terms of frequency, size, and integration. Consistent with our framework, their sources of value creation differ: while centralized firms derive more value from internal R&D, decentralized firms rely more on external knowledge. We discuss how these findings should stimulate more integrative work on theories of innovation

10 Things the PTO Can Do to Enhance Context-Based Patent Disclosure

The PTO held a roundtable and solicited comments on a proposal to require Real-Party-in-Interest disclosures in patents. Through this comment, which I submitted to the PTO, I support their efforts to elicit and disseminate ownership data by 1) explaining why ownership information, and context-information in particular, is so important to the core functions of the patent system of technology transfer and technology commercialization; 2) commending and suggesting several steps the PTO could take/continue to take to improve the quality, quantity, and dissemination of ownership information; and 3) providing an Appendix that summarizes each of the 17 comments that the PTO received in its 2011 Request for Comments on Eliciting More Complete Patent Assignment Information (“2011 RFC”), which the remainder of the comment draws from extensively

Standing with a Bundle of Sticks: The All Substantial Rights Doctrine in Action

This Article provides an overview of the Federal Circuit’s all substantial rights doctrine. Surveying decades of case law, this Article seeks to clarify this confusing area of the law and set out the essential rules for those engaged in patent licensing, patent assignment, and patent litigation. This Article begins by explaining why effective ownership of a patent is critical to standing, and then describes the framework through which courts determine whether a party is, in fact, in possession of all substantial rights and is therefore the effective owner. While there are many factors that courts may consider, certain rights take priority in this analysis, the right to enforce being the most important. This Article concludes by providing guidance on how to structure an agreement to ensure that these rights are allocated predictably and reliably to convey effective ownership of the patent