Exclusive Licenses Do Not Discourage Follow On Research

Posted under Blog, Companies, Diagnostics, Funding, licensing, Medical Devices, Medical Supply, patent, Patent and Trademark Office, Patently BIOtech, Pharmaceuticals, Public Policy, Startups, U.S. Patent and Trademark Office, United States Patent and Trademark Office, Universities, USPTO, Videos by biotechnow@bio.org (Biotechnology Industry Organization)

A recent study presented at the Patent Statistics for Decision Makers Conference organized at the United States Patent Office questions the logic behind a nonexclusive license preference often found in U.S. government technology transfer policy.

In “The Role of Exclusive Licensing in Follow-on Research of Academic Patented Inventions” presentation the authors demonstrate that, contrary to the belief by some, exclusive licensing does not impede future research.

The authors ask two questions.  First, does exclusive licensing affect licensee follow-on research?  Second, does exclusive licensing affect non-licensee follow-on research?  The first question addresses the concern that a company will take a license of a university invention and not develop it.  The second question addresses the concern that follow-on research will not occur without the license thereby limiting the amount of knowledge available.  And the results…

With respect to the first question, the researchers find that exclusive licensee patent citations increase significantly after exclusive licensing.  In other words, the company or entity that receives the exclusive license continues to research and invent as evidenced by the numerous patents that follow based on the licensed technology.

With respect to the second question, the authors find that non-licensee citations increase significantly after exclusive licensing.  In other words, even the people/companies that have no license to the technology continue to research and invent as evidenced by their numerous patents that follow based on the licensed technology.

Maybe it is time to rethink the rationale behind a government lab preference for non-exclusive licenses.

IPCC Features Update on Patent Reform Implementation

Posted under America Invents Act, Blog, Companies, Diagnostics, Funding, Intellectual Property, Intellectual Property Counsels' Committee, Medical Devices, Medical Supply, patent, Patent Reform, Patently BIOtech, Pharmaceuticals, PTO, Public Policy, Startups, United States Patent and Trademark Office, Universities, USPTO, Videos by biotechnow@bio.org (Biotechnology Industry Organization)

The BIO Intellectual Property Counsels Committee Fall Conference featured an update on the implementation of the Leahy-Smith America Invents Act by Janet Gongola, Associate Solicitor of the U.S. Patent and Trademark Office (PTO).

Some provisions of the Leahy-Smith America Invents Act took effect immediately when it was signed into law in September. Ms. Gongola reported that of the 20 provisions that must be implemented by the PTO, eight have been implemented and another ten are in final review and will be posted in the Federal Register in mid- to late-January for a 60-day notice and comment period.

The law required the PTO to undertake seven studies, two of which have begun. The PTO recently held public hearings on prior user rights and international patent protection and is accepting comments on both topics until mid-November. BIO provided testimony on the importance of international patent protection for small businesses.

Ms. Gongola encouraged the audience to submit comments throughout the process as the PTO is eager for feedback from the users of the patent system.

The PTO has an online guide to the Leahy-Smith America Invents Act where you can subscribe to alerts, listen to archived webcasts of public hearings, and view a timeline of implementation highlights.