Patents for Humanity Day participants included, l to r, AUTM Assistant Vice President for Advocacy Michael Waring, AUTM President Fred Reinhart, USPTO Director Michelle Lee, and AUTM Immediate Past President Jane Muir.
AUTM leadership works with its allies in government to advance the technology transfer profession’s goal of protecting the U.S. patent system.
Activities thus far in 2015 have included AUTM members serving as judges to select projects recognized at a U.S. Patent and Trademark Office (USPTO) event held as part of Patents for Humanity Day in Washington, D.C. Among those attending the event was Fred Reinhart, AUTM president and a senior adviser in the Technology Transfer Office at the University of Massachusetts Amherst.
Following that gathering, Reinhart and other AUTM leaders attended a similar ceremony related to intellectual property (IP) protections called “IP Champions,” sponsored by the U.S. Chamber of Commerce.
“Those were really positive events,” says Reinhart, “that dealt with innovations useful in developing countries such as therapies for malaria and tuberculosis, food products to address malnutrition, inexpensive sanitation and solar power systems, and novel assistive technology. AUTM was recognized for its contribution to award selection, and several of the winners were a direct result of university research.”
AUTM is active in protecting that research by providing feedback on legislation introduced that aims to curb the ability of patent trolls, a term used to describe shell companies that acquire old or low-quality patents in order to extort money unfairly from legitimate businesses.
AUTM has been working closely with five university associations headquartered in Washington, paying careful attention to patent legislation that is being considered in both the U.S. House and the Senate.
Reinhart notes that “AUTM is providing opinions, drafting or reviewing position statements and coming out in support of provisions in some of these bills that will effectively discourage abusive patent-related behavior but don’t go so far as to undermine legitimate activity of patent owners like small companies, universities, independent inventors and startup companies that are university licensees.”
Optimism and a turnaround
The threat posed by patent trolls has gotten a lot of attention in the press recently, some of which Reinhart said he felt was exaggerated.
“They are certainly a problem if you are the recipient of an abusive demand letter from such an entity,” Reinhart says. “But statistically, things are already turning around, and the situation is improving for several reasons.
“We want to make sure that new legislation doesn’t harm the American public by undermining our tech transfer efforts and the myriad benefits that come from these efforts. Some of the details are pretty technical, but we have focused on two or three issues that are important to us and made our opinions known.”
Reinhart says that among its efforts, AUTM is also looking at a bill that would restore a meaningful one-year grace period for patent filings after a paper has been published on a discovery.
“After the America Invents Act (AIA) was passed a few years ago,” he explains, “the patent office provided guidance to their examiners that we feel undermined and ‘gutted’ the one-year grace period. Previously, someone at a university could publish a paper describing their invention, and the university would have a full 12 months to file a U.S. patent application.
“Now, the way it has been interpreted by the U.S. patent office, it’s very easy for someone to look at your publication, make a slight change in your invention, file their own patent application and pretty much beat you to the punch,” says Reinhart. “That’s a problem for universities, because we rely on an effective grace period that allows us to publish our inventions and discoveries, yet still provides an opportunity to get a patent on that same invention.”
Patent strategy: numbers game
The number of patents being filed by AUTM members has been rising steadily. Reinhart says 15,000 new patent applications were filed in 2013 (the most recent year for which figures are available), up 6% from 2012. The number of university/non-profit research institution patents issued by the government was 5,700 in 2013, up 11% from the previous year.
“Those figures are increasing because of a combination of factors,” he says. “First, because of concerns about meaningful grace period protection, TTOs are filing more provisional patent applications prior to publication. In addition, schools are expanding their programs. "We’re also learning how to stretch our patent budgets so we can file more applications. Schools that do tech transfer are learning how to do it more efficiently and cost effectively, collaborating more successfully with their inventors, and then working externally with their patent firms.
“There is a realization that commercialization occurs when we offer the private sector protection of their investment, and that comes from intellectual property. If you have a sizeable portfolio of patents, you have assets to license, and the probability of getting a license is higher,” Reinhart says. “We can license copyrights and we can license proprietary materials, but mostly we work with patents. If you don’t have patent applications or issued patents to offer to companies or investors, you really don’t have a program.
“But part of it,” he continues, “is also a result of how you approach inventors and the encouragement that you give them to disclose inventions,” he says. “If you are good at that and at managing inventions and licensing, you get more inventions.”
Universities as micro-entities
On a final note, Reinhart points out that AUTM supports legislation that would classify universities as “micro-entities” in the eyes of the USPTO. Currently, universities pay USPTO fees that are one-half of what large employers pay because of universities’ non-profit status. But with the new classification, that figure would be cut to a quarter, he explained.
“That would help universities, especially if the trend toward filing more and more provisional applications continues," he says. “The cost of a patent depends on the technology, but if it’s for life science or biotech, it can be $25,000 to $30,000 per patent. With other technologies, you might be able to get one for $10,000 to $15,000. In any case, it’s expensive, and reduced filing fees would help.”