Office for Technology Commercialization supports Congress’ patent reform bill

The Patent Reform Act of 2009 — an amended version of last year’s bill — represents a fair compromise.

Tara Bannow

Although it tends to stay out of the limelight, the Office for Technology Commercialization got vocal recently in support of a patent reform bill being debated in Congress. Patent reform requires balancing a variety of competing interests, and the Patent Reform Act of 2009 âÄî an amended version of last yearâÄôs bill âÄî represents a âÄúfair compromise,âÄù said Jayme Hines, OTC contracts manager. The office supervises all patenting and licensing at the University of Minnesota. âÄúItâÄôs a middle of the road,âÄù he said, adding that there are positive and negative points to the bill. While itâÄôs an improvement from what has been introduced in the past, the many competing interests render meaningful patent reform impossible, said David Poticha, senior licensing manager at the University of Colorado DenverâÄôs Anschutz Medical Campus Technology Transfer Office. Conflicts between the software and the pharmaceutical sectors have long complicated patenting regulations. Computer companies, continuously coming out with new gadgets, are looking for short-term patent protection. When it comes to developing drugs, however, patents can mean decades and billions of dollars. Therefore, pharmaceutical industries advocate long-term solutions. They want to make patents come easier, and with longer shelf lives. âÄúIn human health, weâÄôre held to a much higher standard of safety and efficacy,âÄù said Paul Wilkinson, president of Wilkinson Chem-Pharm Solutions and professor emeritus at the University of Connecticut School of Pharmacy. âÄúThose things take a tremendous amount of time and a tremendous amount of money to demonstrate.âÄù The bill would make it more difficult to challenge patents through a process some call âÄúserial challenging,âÄù or attacking a patentâÄôs validity several times using multiple reasons. It would also give the U.S. Patent and Trademark Office the ultimate authority to deny âÄúserialâÄù patent challenge requests. Patents are challenged for a variety of reasons, both legitimate and illegitimate. Hines noted that none of the UniversityâÄôs patents have been challenged in the more than two years heâÄôs been at the University. Universities, which tend to be more strapped for cash than major corporations, have a difficult time defending themselves in court against patent infringement accusations, said Stephen Heinig, lead science policy analyst of the Association of American Medical Colleges. The AAMC, along with five other higher education associations, wrote a letter to Congress in March supporting the reform. A patent lawsuit currently costs about $5 million, Hines said. He said itâÄôs unclear whether the bill will alleviate the biggest roadblock to patenting university ideas: the âÄúpublish or perishâÄù motto that convinces faculty members to write papers rather than file patents on their discoveries. In academic circles, publishing continues to be the main avenue to tenure, Poticha said. âÄúYou donâÄôt go to major meetings and conventions and have people put up patent citations on the PowerPoint,âÄù he said. âÄúItâÄôs always journal articles.âÄù But if the paper comes before the patent, third parties have the opportunity to snatch the idea with a patent before the actual investigator can. The bill would put the United States in line with the rest of the world by moving to a âÄúfirst to fileâÄù system in which the inventionâÄôs creator gets priority through the creation of a grace period. Whether the reform passes on a national level, universities should consider creating their own reform, including more incentive for faculty members to patent, Poticha said. âÄúA professorâÄôs job is not to invent and commercialize,âÄù he said. âÄúA professorâÄôs job is to do research, discover and publish âÄî the opposite of the goal with patents, where youâÄôre looking for monopolies and keeping things secret for a while.âÄù The University has considered allowing faculty members to achieve tenure through filing patents âÄî a move the OTC would support, Hines said. The OTC takes several measures to encourage faculty members to file patents, including participating in their initial training, sponsoring educational seminars and meeting one-on-one with anyone who has questions or is considering making a disclosure, Hines said. âÄúPatenting precludes others from practicing a device,âÄù he said. âÄúPublication enables them.âÄù