Anderson

Professors Jorge Contreras and Jacob Sherkow recently published an article on February 17, 2017, titled, "CRISPR, Surrogate Licensing and Scientific Discovery: Have Research Universities Abandoned Their Public Focus," in Science.  The authors examined the publicly available licenses between the research institutions and "spin-off" companies which include one of the principal researchers (the spin-off companies are called "surrogates" by the authors).  The authors believe that an apparent "bottleneck" exists with respect to some of the exclusive field of use licenses granted to surrogates which may result in underuse of the technology ultimately harming innovation.  This is, in part, because the surrogates may not be best positioned to utilize the technology under some of the broader fields of use that are exclusively licensed.  The authors note that a "platform technology" such as CRISPR should be broadly accessible and provide some su...

Michael Eisen , a geneticist at University of California, Berkeley, has written a blog post concerning the CRISPR dispute , the Bayh-Dole Act and academic science.   Notably, Dr. Eisen is running for the U.S. Senate in California.   Dr. Eisen is essentially critical of the Bayh-Dole Act for skewing incentives toward commercially valuable research, complicating accessing research, slowing the progress of research and creating incentives for researchers to “behave badly.”   Here is an excerpt from his post: Academic science is, after all, largely funded by the public. By all rights discoveries made on with public funds should belong to the public. And not too long ago they did. But legislation passed in 1980 – the Bayh-Dole Act – gave universities the right to claim patents on inventions made by their researchers on the public dime. Prior to 1980 these patents belonged to the federal government and many languished unused. The logic of Bayh-Dole was that, i...

A recent Technology Transfer Tactics article by Jesse Schwartz published on February 22, 2017 states that universities are bringing more intellectual property suits, particularly patent infringement actions, against large companies.   Notably, the article points to the University of Minnesota infringement suit against Gilead Life Sciences and states: Litigation like the UM lawsuit indicates that universities are warming up to the idea that fighting for their patent rights is worth the effort and expense, says Joshua H. Haffner, JD, an attorney with Haffner Law in Los Angeles. The UM case continues a trend of schools stepping up and demanding payment for use of their patents, he notes. Carnegie Mellon University settled a patent infringement case with Marvell Technology Group for $750 million in 2016, and later that year a jury ordered Apple to pay the University of Wisconsin more than $234 million for using its microchip technology in iPhones and iPads without permission. In 2015, ...

In February of 2017, the U.S. Chamber of Commerce (Chamber) released its 2017 International IP Index .   (Index).   Unsurprisingly, the overall conclusion is that IP is the medicine for all that ills countries.   The 148 page Index contains a helpful description of the purpose and function of the Index: Now in its fifth edition, the U.S. Chamber’s International IP Index continues to provide an important industry perspective on the IP standards that influence both long- and short-term business and investment decisions. The Index is a unique and continuously evolving instrument. Not only does it assess the state of the international IP environment, it also provides a clear roadmap for any economy that wishes to be competitive in the 21st century knowledge-based global economy. Large, small, developing, or developed—economies from across the world can use the insights about their own national IP environments as well as that of their neighbors and international competitors ...

OxFirst is hosting another free webinar which, like previous events, promises to be most worthwhile. The topic is ‘IP Commercialization Tactics for Wealth Generation & Innovation’, and the event will take place on February 23rd at 15:00-16:00, British Standard Time. IP has often been portrayed as either an undervalued or underleveraged asset. This talk discusses the various means IP owners have at their disposal to commercialize their IP, be it patent brokerage, IP sales or licensing. The speaker will be Patrick Terroir, Lead OxFirst Advisor and Chair of Patent and Technology Licensing Committee of Licensing Executive Society. Previously, Mr. Terroir was Managing Director of CDC Intellectual Property. He initiated and contributed to the creation of France Brevets and to the creation of the Tech Transfer Accelerators Companies (SATT) for the French universities. Between 2006 and 2008 he initiated and developed Caisse des Dépôts’s department in charge of industrial innovative cluste...

Israel's budget for 2017-18 confirms some measures for tech companies announced last year, with the changes applying from 1 January 2017. Firstly, the budget reiterates the 'innovation box' regime proposed last year, introducing a 6% corporate income tax on 'technological earnings'. The budget also expands on the tax incentives for 'preferred technological enterprises' and 'special preferred technological enterprises': For PTEs: - the corporate tax rate is 12% instead of 24% on tech earnings (or lower, if in a development area) - the withholding tax on dividends out of tech earnings of qualifying companies is reduced to 4% ( unless lower by treaty ) - the capital gains tax rate on the sale of qualifying intangibles to a related nonresident is reduced to 12% where the assets were bought from a non-resident ( unusual to see a tax incentive for outbound sales of IP ) For SPTEs: - the corporate tax rate is 6% on tech earnings - the withholding tax rate o...

Recently, President Donald Trump nominated Neil Gorsuch of the U.S. Court of Appeals for the 10 th Circuit to the U.S. Supreme Court.   Many have expressed disappointment at the nomination because of his close comparison to the late Associate Justice Antonin Scalia, but it certainly could have been worse to some.   Interestingly, BuzzFeed discusses a survey which finds that based on citations to Scalia opinions there is one justice who is supposedly closer to Scalia of the group considered by Trump: Merrick Garland.   Yes, Merrick Garland, who was former President Obama’s pick.   What of Neil Gorsuch’s impact on IP should he be confirmed?   There’s some speculation and some have reported that we don’t have enough information.   Interestingly, the Congressional Research Service (CRS) released an initial report yesterday (February 1, 2017) on Judge Gorsuch.   On what area may he have the most impact on IP: his views on executive power...

Corporate Counsel (John Council with Texas Lawyer) has just announced that a Dallas, Texas jury has awarded $500 million against Facebook owned Oculus to ZeniMax Media in a copyright infringement and trade secret misappropriation case.  Interestingly, the article notes that Mark Zuckerberg testified that Facebook only "had just one weekend to conduct a due diligence before completing the deal."  I bet that was a very, very busy weekend for some lawyers.  Whither "Facebook's" virtual reality technology?  It'll be interesting to see how the appeals work out. Please see the article for more information. 

The Intellectual Property Owners Association (IPO) board of directors has adopted a resolution which advocates for amending section 101 of the Patent Act in the U.S. to essentially overturn Mayo v. Prometheus and Alice v. CLS Bank.   The reason for the resolution is the development of inconsistent application of the so-called Alice/Mayo test.   Indeed, there have been a number of relatively recent decisions attempting to clarify Alice/Mayo which find patent eligible subject matter satisfied, including DDR, Enfish, McRO, Amdocs, and Cellz Direct.   How does this happen: the development of panel splits at the U.S. Court of Appeals for the Federal Circuit.   Notably, the United States Patent and Trademark Office (USPTO) has worked extremely hard in attempting to provide guidance to patentees and arguably is doing quite a good job.   I think the USPTO deserves a lot of credit for attempting to bring clarity and predictability to the field.   My personal opin...