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Tuesday, September 24, 2013

Professor Robin Feldman on the Struggle of Universities to Make Patents Pay Off

Feldman talks to Nature in this September 24, 2013 story on the trend of universities selling their unused patents to aggregators or "patent trolls."
United States patent number 7,023,435 almost didn’t happen. The application, which covered a way of imaging a surface, was rejected four times by the US Patent and Trademark Office. But the California Institute of Technology (Caltech) in Pasadena, which filed the patent, fought back — and prevailed in 2005.

Robin FeldmanCaltech’s faith in the hard-won patent was not matched by industry: three years later, no one had licensed the rights to the invention. So in 2008, Caltech exclusively licensed it, along with 50 other patents, to a subsidiary of Intellectual Ventures, a company that has stockpiled 40,000 patents from which it collects US$3 billion in licensing income. The firm sometimes uses its patents to sue other companies for infringement, yet it rarely develops the inventions described by its intellectual property.

Such patent-assertion entities, sometimes called aggregators, monetizers or ‘patent trolls’, are questionable homes for university inventions. But in the push to get academic research out of the ivory tower — and to make money — university technology-transfer offices are becoming less choosy about their partners.

“As universities struggle to find revenue sources, one might worry that the monetization industry will be very tempting,” says Robin Feldman, director of the Institute for Innovation Law at the University of California Hastings College of the Law in San Francisco. There are already signs that this is happening, she adds. Last year, she published evidence that 45 universities around the world licensed or sold patents to Intellectual Ventures shell companies (T. Ewing and R. Feldman Stanford Technol. Law Rev. 1; 2012).

Read the full story from Nature here.

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