Tuesday, 9 May 2017

Legislation Introduced in Maryland to Restrict University Licensing: The Future?

The Electronic Frontier Foundation (EFF) has started a program called Reclaim Invention.  The premise of the program is to ensure that universities, particularly public universities, are not licensing patents to so-called patent trolls.  There are basically two prongs to the effort: 1) mobilizing people involved with universities to pressure universities to sign a patent pledge—essentially volunteering to engage in certain conduct concerning university inventions and licensing; 2) pushing state legislatures to adopt legislation restricting universities licensing practices.  The EFF’s proposed legislation includes the following two thrusts:

First, it requires university technology transfer offices to adopt a policy committing them to manage patent assets in the public interest. University policy should include:

  • researching the past practices of potential patent buyers or licensees;
  • prioritizing technology transfer that develops inventions and scales their potential user base;
  • endeavoring to nurture startups that will create new jobs, products, and services;
  • fostering agreements and relationships that include the sharing of know-how and practical experience to maximize the value of the assignment or license of the corresponding patents.

The second part of the legislation voids any agreement to license or transfer a patent to a patent assertion entity. [emphasis added]

The EFF’s program is based on research by Professor Robin Feldman concerning Intellectual Ventures relationship with universities. 

Notably, legislation taking the EFF approach has been introduced in the state of Maryland.  So far, the status line on the Maryland legislature webpage states: "In the House -- Unfavorable Report from Appropriations -- Withdrawn." Notably, the synopsis of the bill states that it conditions student financial assistance and research funding from the state on adopting the policy.  It will be interesting to see if the legislation (or some modified form of it) passes.  For a critique of the EFF’s approach, please see this article in Forbes by noted property rights scholar Richard Epstein. 

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