Patent bill’s effects on products discussed

David Hyland

University administrators fear that if a patent bill under consideration in Congress passes, it will dramatically alter the way they do business.
Officials in the University’s Office of Patents and Technology Marketing said the bill might not guarantee the security of a patent and will greatly hinder and complicate attempts to acquire patents. Others, however, maintain it would clarify and align patent law with the rest of the world.
“The more uncertainty that goes in the process, the longer it gets, the more it creates issues for us,” said Tony Strauss, the office’s director of mechanical, chemical, electrical and biological technologies.
In recent years, technology transfer has proven a lucrative field for the University. The office has enjoyed a dramatic increase in the number of patents issued and revenue from the royalties of licensing agreements. Last year the office pulled in $4.9 million from licensing royalties.
A patent is a document from the U.S. government allowing an individual to exclude others from producing a given technology without the permission of the patent holder.
University adjunct professor Robert Beck, who specializes in patent law, said the legislation is meant to harmonize U.S. law with international patent regulations.
The multi-faceted bill contains provisions that would turn the U.S. Patent Office into a “government corporation,” similar to the how the federal post office was converted several years ago. Another part mandates the patent office to publish all patent requests 18 months after they are submitted.
The most controversial aspect however is the “prior user rights” provision. This clause redefines prior usage to allow researchers without a patent to produce already-patented technology without breaking the law.
Beck said the current definition of prior user rights states that someone who uses the invention in commercial research but doesn’t get permission could be liable for infringing on the patent.
Strauss said the bill could create a legal mess for his office and similar offices at other universities. Schools would not only suffer from potentially having a patent that did not exclude others, but they would have to be engaged in a number of legal maneuvers to clarify their control of patents.
“It certainly makes the situation far less clear from our standpoint in seeking protection and commercialization of intellectual property,” Strauss said.
Strauss added that such vulnerability would encourage the University and researchers to keep their discoveries a secret out of fear of having their invention subverted by a competitor.
Beck counters that such fears are invalid.
“By that time the U is pretty well out of the picture. They license technology out and they really don’t have any ongoing rights,” Beck said.
Local patent attorney Bob Harris disagrees. Harris said the University would feel a financial pinch by shrinking revenue from the licensing agreements.
Beck said the new definition would make it easier to challenge patents, but said the bill does have benefits.
“There’s a trade-off here,” he said. “There would be more ways to invalidate or challenge a patents’ validity, but by the same token, it would be much clearer as to what events and acts do in fact invalidate a patent. That’s the plus side of it.”
Harris, who has often collaborated with the University over issues involving patents, said he believes only a minority of patents issued would be affected by the bill.
The House of Representatives has already approved the measure and the Senate Judiciary Committee is expected to take the bill up soon.
Neither of Minnesota’s senators, Republican Rod Grams and Democrat Paul Wellstone have taken a position on the issue. But Steve Behm, Grams’ press secretary, said the senator hopes to strike a balance between better service for the general public and inventors’ rights.