National Academy of Inventors 2023 World-Wide University U.S. Utility Patent Rankings

The National Academy of Inventors has released its 2023 university rankings for U.S. granted utility patents.  The top 10 include: “1) The Regents of the University of California -- 546; 2) Massachusetts Institute of Technology – 365; 3) The University of Texas System –235; 4) King Fahd University of Petroleum and Minerals –216; 5) Stanford University –199; 6) Purdue University – 198; 7) Harvard University – 186; 8) Zhejiang University –185; 9) Arizona State University –170; 10) California Institute of Technology –156.  Zhejiang University (2022, 16) passed Tsinghua University (2022, 5) as the highest ranked university based in China for 2023.  The list of the top 100 is available, here: 2023-Top-100-Worldwide.pdf (academyofinventors.org).

U.S. Government Accountability Office Report on Unwanted University Tech Transfer Risk

The U.S. Government Accountability Office has released a report titled, “CHINA Efforts Underway to Address Technology Transfer Risk at U.S. Universities, but ICE Could Improve Related Data,” concerning recommendations to better track visiting scholars, students and researchers from outside the United States.  The published report is incomplete because some of it has been deemed too sensitive to disclose.  Notably, the published report points to a failure of law enforcement agencies, including Immigration, Customs and Enforcement (ICE), to track certain relevant data concerning the risk that unlawful technology transfer may occur involving federally funded university research.  The report is available, here, and states, in part:

According to federal internal control standards, management should use quality information that is, among other things, complete and accurate to achieve the entity’s objectives, and process relevant data into quality information within the entity’s information system. The U.S. government has identified research in sensitive fields, facilities and locations of expected work, and employment and employment history as potential risk factors for the transfer of technology. Improving the completeness of employer information in SEVIS could enhance ICE’s management of the OPT program and provide the U.S. government with more information on who is employing foreign students and, therefore, whether certain individuals may have access to technology.

Since 2016, oversight bodies at the five U.S. grant-making agencies in our review—NIH, NSF, NASA, DOD, and DOE—have investigated an increased number of researchers for potential violations related to the security of federally funded research at U.S. universities, according to agency data. These include grant fraud and compliance violations related to failures to disclose potential sources of foreign influence on researchers, such as other support for individual research endeavors, significant financial interests, or other conflicts of interest. These investigations have often involved undisclosed affiliations with the PRC, such as receiving PRC research funding. However, agency officials emphasized that decisions made to initiate an investigation or during the course of an investigation are not based on individual characteristics such as nationality or visa status, which is information that none of the five agencies in our review consistently collect. Agency data indicate that investigations have resulted in agency and university actions to address research security risks related to foreign influence. However, little information is available about civil and criminal cases related to potential transfer of university research because DOJ does not systematically track all cases specific to U.S. universities or federal grant funding. Further, officials from grant-making and law enforcement agencies we spoke with noted that it is challenging to assess the more general extent and negative impact of technology transfers to foreign countries. Amid agency efforts to address this type of national security threat, university faculty, officials from university and Asian and Asian-American associations, and others have highlighted the importance of balancing protection of federally funded research against potential adverse effects of these efforts. . . .

As a result of investigations initiated from 2016 through 2021, grantmaking agencies—particularly NIH, which accounted for about 73 percent of the individuals under investigation in our review—addressed a number of violations that could threaten the integrity of university research. As of October 2021, 94 percent of NIH investigations into researchers of concern had uncovered at least one compliance violation that NIH deemed serious, such as a failure to disclose foreign conflicts of interest (e.g., foreign affiliations, grant funding, or talent recruitment program participation), according to NIH data. As a result, NIH reported that at least 76 percent of individuals under investigation were no longer associated with grant-funded research or other grant-related responsibilities, primarily through resignation or actions taken by grant recipient institutions, including termination or exclusion from grant-funded research. In addition, NIH officials noted that because many of their investigations remained ongoing, they expected the number of actions taken in response to violations to rise. . . .

In this context, U.S. agencies and others have identified factors that indicate the types of foreign students or scholars who may pose a greater risk of transferring technology from U.S. universities. ICE already maintains information in its SEVIS database related to several of these factors, including country of citizenship and level of education. However, ICE has not completed a required assessment to understand whether it needs to update SEVIS to better capture information related to students and scholars who may pose a greater risk for technology transfer. Furthermore, data related to other risk factors already required in SEVIS, such as employer information, are incomplete. More complete data, and a better understanding of the information needed to identify students who present the highest risk for the potential transfer of university research, could strengthen U.S. government efforts to identify and assess risks to U.S. research and development.

Trademark Royalty Securitization Deal with Vanderbilt University

In 2019, Global Capital gave Goldman Sachs an award for most innovative securitization deal.  The deal concerned the securitization of royalty payments from a license between Vanderbilt University and Vanderbilt University Medical School.  The deal apparently provided Vanderbilt University funding raising its endowment by 30%.  More details are available, here, in an article by Max Adams.  In 2018, Vanderbilt University had an endowment around US $4.6 billion. 

The U.S. National Institute of Standards and Technology Green Paper on Improving Technology Transfer

The U.S. National Institutes of Standards and Technology has released its Final Green Paper on its Return on Investment: Unleashing American Innovation Project.  Essentially, the ROI project is intended to ensure that the United States receives an improved return on investment with respect to public funding for research and development.  The Green Paper includes stakeholder data identifying potential issues as well as proposals to improve the technology transfer process.  For example, the Green Paper on stakeholder data states:

Return on Investment Initiative – Summary of NIST’s Findings Based on Input from Stakeholders

Strategy 1 Identify regulatory impediments and administrative improvements in  Federal technology transfer policies and practices

Government Use License: According to stakeholders, the scope of the “government use license” is not well defined

March-In Rights: According to stakeholders, the circumstances under which the government may appropriately exercise march-in rights to license further development of an invention to achieve practical application are not clear

Preference for U.S. Manufacturing: According to stakeholders, existing statute supports the preference for U.S. manufacturing but the process to obtain a waiver is confusing 

Copyright of Software: According to stakeholders, the “Government Works” exception to copyright protection for software products of Federal R&D at Government-Owned, Government-Operated Laboratories constrains commercialization

Proprietary Information: According to stakeholders, an expanded protection period for proprietary information under a Cooperative R&D Agreement would encourage greater collaboration with Federal Laboratories Strengthen Technology Transfer at Federal Laboratories: According to stakeholders, updates to policies and practices under the Stevenson-Wydler Act could be simplified

Presumption of Government Rights to Employee Inventions: According to stakeholders, the process to determine a present assignment of invention rights by Federal employees to the Federal Government is overly burdensome

Strategy 2  Increase engagement with private sector technology development experts and investors

Streamlined Partnership Mechanisms: According to stakeholders, improved clarity and use of best practices government wide would streamline agreements and ensure greater transparency for R&D partners 

Expanded Partnership Mechanisms: According to stakeholders, private sector investment for translational R&D and technology maturation could be increased through expanded partnership agreements and nonprofit foundations

Technology Commercialization Incentives: According to stakeholders, recipients of Federal funding could benefit from a limited use of R&D funding awards to enable intellectual property protection 

Strategy 3 Build a more entrepreneurial R&D workforce

Technology Entrepreneurship Programs: According to stakeholders, expanding technology entrepreneurship programs at Federal R&D agencies government-wide will help build a more entrepreneurial workforce

Managing Conflicts of Interest: According to stakeholders, current requirements for managing conflicts of interest pose challenges to build a more entrepreneurial R&D workforce Strategy

Strategy 4 Support innovative tools and services for technology transfer

Federal IP Data Reporting System(s): According to stakeholders, a secure, modern platform is not available for reporting data on intellectual property resulting from Federal R&D

Access to Federal Technologies, Knowledge, and Capabilities: According to stakeholders, a federated data portal is not available to easily access, use, and analyze information on federally funded technologies, knowledge, and capabilities that are available to the public

Strategy 5 Improve understanding of global science and technology trends and benchmarks

Benchmarking and Metrics: According to stakeholders, current metrics to capture, assess, and improve broad technology transfer outcomes and impacts based on federally funded R&D and underpinning operational processes are inadequate

The Green Paper contains discussion and findings on all of the strategies and subpoints.  For example, on the government manufacturing clause:

NIST Finding 1.  According to stakeholders, the scope of the “government use license” is not well defined. Market uncertainty is created by the lack of a clear definition of “government use” that is limited to use directly by the government—or a government contractor in the performance of an agreement with the government—for a government purpose only, including continued use in research and development by the government. The scope of the government use license should not extend to goods and services made, sold, or otherwise distributed by third parties if the government—or a government contractor in the performance of an agreement with the government—does not directly use, provide, or consume those goods and services.

On using “march in rights” as a form of price control, the Green Paper notes:

Stakeholders pointed to potential consequences from using march-in rights as a price control. These reasons include impeding the creation of new drugs and discouraging university and medical school licensees from making the substantial additional investments necessary to develop and commercialize new drug discoveries. A 2019 report from the Information Technology and Innovation Foundation drew similar conclusions, noting that “[m]isusing the “march-in right” provision of the Bayh-Dole Act could negatively impact U.S. life-sciences innovation and result in fewer new drugs.”67 Other responses focused on ensuring that new drugs reach the people that helped fund work through Federal basic research.

The finding on “march in rights” states:

NIST Finding 2. According to stakeholders, the circumstances under which the government may exercise march-in rights are not well-defined. Market uncertainty is created by the lack of a clear definition of the use of march-in rights that is consistent with statute, rather than as a regulatory mechanism for the Federal Government to control the market price of goods and services.  

The Green Paper also notes that stakeholders are very concerned about the inconsistent and poor approach by the Federal Government to the protection of trade secrets, which puts a damper on collaboration between the public and private sectors.  On page 121-125, there is a summary chart of strategies and findings, including an indication whether the solution should be legislation, regulation or both.  The Green Paper is available, here. 

New Collaboration Between University of California, Irvine and Beckman Coulter Diagnostics

Beckman Coulter Diagnostics and the University of California, Irvine have issued a press release announcing their new collaboration.  The press release states, in part:

"We are honored that Beckman Coulter Diagnostics has selected UCI as a strategic innovation partner," said Richard Sudek, Ph.D., chief innovation officer and executive director at UCI Applied Innovation. "This is a new type of industry collaboration which aims to significantly change how industry and universities partner together. We look forward to teaming up with Beckman Coulter to increase the speed and quality of how UCI discoveries make it to market."

"We are excited to tap into the broad expertise of UCI researchers as we focus on identifying innovative solutions to clinical unmet needs," said Fiona Adair, Ph.D., vice president of strategy and innovation at Beckman Coulter Diagnostics. "We believe this type of academic-industry partnership can lead to development of innovative diagnostic technologies to improve healthcare. UCI Applied Innovation is a place where valuable new ideas are incubated. In turn, we can provide promising students, researchers, and entrepreneurs industry-specific feedback and mentorship opportunities. We will have a Beckman Coulter office at the Cove @ UCI Applied Innovation for seamless collaboration with academic units as well as to integrate into the innovation ecosystem."

This level of collaboration is an industry model of synthesizing research, commercial expertise and clinical needs to produce beneficial results. As a first step, Beckman Coulter will fund Proof of Product grants to help UCI innovations bridge the gap between the lab and early commercialization. Through these grants, Beckman Coulter will determine a specific focus area for university entrepreneurial teams. 

Additionally, Beckman Coulter will also seek eligible UCI graduate students to enter its competitive talent onboarding program, in which they'll get the opportunity to work across multiple divisions of the company. 

"The partnership with UCI represents a landmark in Beckman Coulter's strategic initiative to drive translational innovation and extend the company's leadership in clinical diagnostics." said John Blackwood, senior vice president and general manager of products and services at Beckman Coulter. "Beckman Coulter is engaging with academic partners that excel in applying the latest technology to develop superior solutions for better patient outcomes. UCI maintains an ecosystem of innovation that facilitates academic-industry partnerships and we are excited about the opportunity to leverage UCI's research expertise for the benefit of patients around the world."

Hat tip to Technology Transfer Central. 

The Importance of an Accurate Assessment of Patent Valuation and Potential Market

A recent article in the Saint Louis Post Dispatch by Christopher Yasiejeko describes a patent-related dispute between two academic institutions.  Two major research universities, University of Wisconsin (through its technology licensing arm, Wisconsin Alumni Research Foundation (WARF)) and University of Washington, Saint Louis (WUSTL) are engaged in litigation concerning royalty payments over a jointly invented patented invention that was licensed to Abbott Laboratories.  The inventors included a researcher from Wisconsin and one from WUSTL. 

One of the issues with university developed technology is who will cover the patent prosecution costs.  Here, WARF apparently agreed to cover the costs for a higher royalty rate.  The dispute concerns apparent representations made by WARF concerning the value of the patent—allegedly representations were made that the value was not very high by WARF.  WUSTL appears to assert that WARF made representations to others that the patent was actually quite valuable and eventually important to the pharmaceutical, Zemplar, which according to the article “generated $409 million in sales in 2011.”  This appears to be a case where fraud in the inducement in entering the contract is relevant.  However, it seems strange that WUSTL was unable to arrive at their own valuation or understand the potential market for the invention—perhaps they did not have the resources at the time invested in technology transfer.  WARF was likely well financed at that time and certainly experienced.

[Hat Tip to Technology Transfer Central]

Facebook to Scoop (?) New Ideas in Partnership with Leading Research Universities

In an intriguing post, co-Blogger Neil Wilkof recently discussed how essentially elite firms may be beating the competition.  In a recent article on Reuters titled “Facebook Forges Agreement with 17 Universities to Streamline Research,” Dustin Volz discusses how Facebook has entered into partnerships (which includes unstated funding) with 17 major research institutions, including Harvard, Stanford and MIT, for the opportunity to work together on forthcoming research.  The article is a little light on details concerning the agreements.  As I described Steve Blank's discussion in an earlier post, some firms have placed outposts in technology innovation hotbeds to track new cutting edge developments and companies.  For sure, the nimble survive and those who are not do not—see Kodak.  However, Facebook may be strategically moving one step forward by starting at the source of some of the new major developments.  This arguably gives Facebook the “first” opportunity to scoop up new research and ideas as they develop in leading research universities.  Is this a good thing or a bad thing for innovation and importantly competition? 

The Reuters article states that:

The agreement between Facebook's Building 8 and the universities comes as the social media company seeks to find new revenue streams in virtual reality and artificial intelligence, after the company signaled last month it had begun to hit some advertising growth limits on its network of 1.8 billion monthly active users.

Research partnerships between universities and companies typically take nine to 12 months to facilitate, but the new agreement will allow for collaboration on new ideas within weeks, said Regina Dugan, who joined the company in April to run the new Building 8 unit.

Dugan did not provide specifics to explain how the partnership will promote a quicker pace of research, but traditional negotiations between universities and companies can often take several months.

Biotech Hopping at Wall Street and Biotech Patenting on an Upswing--More Patenting to Come?

The Wall Street Journal reports that there have been 16 biotech IPOs (it is unclear what is defined as biotech) since the beginning of this year raising over $1.1 billion.  (for more on venture capital backed IPOs generally see here)  To put that in context, in 2004 there were 25 IPOs bringing in close to $1.17 billion.  In the last ten years, at this point, this year would be tied for the second best year and the future looks bright for more biotech IPOs.  The Wall Street Journal also speculates that the rise in IPOs along with their general success is attributable to R&D and clinical trial successes.  For example, the article states that: “Last year, the Food and Drug Administration approved 39 new drugs, according to the agency, a figure not reached since 1997. This year, the agency has approved 13 new drugs.”  With the supposed dried up pipeline of Big Pharma, this is welcome news.  Also, the surge in IPOs with more funding may mean more money for patenting efforts in the biotech space with more investors looking to biotech.

On the patenting side, Nature Biotechnology’s Bioentreprenuer reports on statistics on biotech patenting provided by IP Checkups.  It is also unclear what is defined as “biotech,” but the numbers are interesting.  There is a general upswing in biotech patents granted since 2008 from 657 to 850 in 2012 in the United States.  Interestingly, the article also notes the average number of biotech patents by university.  (it is unclear whether these numbers are for granted patents or for patent applications—or full applications or provisional--but it is more likely applications or some of the other numbers don't add up).  If you add up the average number of patents per year between 2008 and 2012 for U.S. universities listed (not all U.S. universities apparently), you get around 880 patents in the United States per year.  The article also has the numbers for patenting at the EPO.  The patenting in the United States is quite a bit higher than the patenting at the EPO.  This could be, in part, because of cost.  Any opinions on the data?   

A New Kind of University? Merging Industry and Academia (with help from the Government) from the Ground Up (almost).

The NY Times recently discussed the admission of the first class of graduate engineering students in computer science at Cornell NYC Tech.  Cornell NYC Tech is an ambitious graduate school designed to foster entrepreneurship through innovative curriculum and a close—even intertwined—relationship with industry from the get go.  Here’s a description of its academic structure: "Research at Cornell Tech is organized around flexible and dynamic interdisciplinary application hubs instead of traditional academic departments. This model serves as a focal point for the campus, accelerating existing sectors of New York City’s economy and driving the formation of new technology businesses through close ties to customers and unique domain knowledge. The first three hubs – Connective Media, Healthier Life and Built Environment – reflect the frontier of the information economy today and where it’s going."

Physically, classes will be located amongst innovative companies.  And, employees of the companies will work hand-in-hand with students and faculty.  Fridays are apparently devoted to lectures by people from outside academia.  Students have industry advisors for their master’s project—someone from a company, from a nonprofit or who is an early stage investor.  Professors are strongly encouraged to devote time working for industry.  You may be thinking: what about all of the intellectual property disputes that are bound to happen?  Don’t worry—they’ve thought of that as well: “[I]nstead of protracted legal battles with the university over intellectual property rights to those projects, the companies that oversee them will get a contract designed to facilitate frictionless collaboration.”  And, government, industry and academia have “skin in the game” so to speak.  First, Cornell (Cornell’s academic partner is Technion -- Israel Institute of Technology) has set aside $150 million to invest in New York’s technology sector.  Second, the City has awarded $100 million and $300 million in real estate to the new school.  Third, Google has donated space at its $2 billion headquarters in NYC for the first class until the permanent campus is completed.   Other companies and nonprofits have signed on to participate as well.  To top this off, the United States Patent and Trademark office will have an onsite representative—an innovation and outreach coordinator—to help with any intellectual property issues and federal government aid. 

What does this all mean for the “traditional” university?  Will private funding for research gravitate toward this particular type of “new” school?  What about government funding?  Is this school really that different from what is already happening?  Is basic research a thing of the past?  Academic freedom, anyone? 

Times are Tough for Universities: What is the Future of University Online Education and IP

The University of California (UC) system has invested millions of dollars in marketing the offering of some of its courses online.  The courses are not only offered to current UC students, but also are offered to non-UC students.  The courses are not offered to non-UC students for free and the hope, in a relatively difficult financial time for most universities, is that the lure of UC classes will lead to extra revenue for the UC system.  Unfortunately, after spending 4 million dollars on marketing, only one student signed up for an online course who is not a current UC student.  That’s right—one student.  The San Francisco Chronicle and the Sacramento Bee both discuss the issue.  Is the future a grim one for online education--at least at most universities? 

Again, times are tough for universities and looking for outside revenue by offering courses to people who aren’t current students for a fee is one way to make money.   So, don’t expect universities to stop trying and they probably shouldn’t because making education available for more is not such a bad thing.  There is a question of how aggressive university administrators (or others) are going to get in pursuing online education—and IP has a part to play.  Generally speaking, in the United States, professors will own the copyright in their teaching materials or other published materials, usually so-called traditional scholarly works—because of university policy (but, see below).  They also likely won’t have an obligation to share royalties with the university.  However, with the advent of online education, administrators may decide they want the university to own the copyright in any materials created for use in the online course (and that course may be subsequently offered in the future without that professor but using that professor’s materials).  The administrator may also start scratching his or her head and wondering well, why don’t we just own any textbooks or other books produced by the academic--well, we should!  Yikes!  That would be a very unpopular decision for an administrator to make—at least with faculty.  What do you think?  Should faculty own the copyright in their course materials and other published materials, including traditional scholarly works?  What about academic freedom?  Should faculty own all of the materials they created for online courses?  For an excellent discussion of copyright ownership and online education, see Professor Roberta Kwall’s article. 

In a 2006 study concerning university policies and copyright ownership in the United States, the authors of the study found:

[M]ost Universities are writing intellectual property rights policies to delineate the rights of faculty to their works.  Although 93% of these policies designated that professors should have control of their traditional scholarly works; 71% of these universities specifically listed exemptions to this policy. Most universities (95%) claimed some faculty works, especially if the works required substantial use of university resources (83%). On a positive note when the university did claim rights to the intellectual property of a faculty member, 95% offer to share a percentage of the royalties.

Our research also revealed some areas of concern. Although half of the universities gave control of syllabi, tests and notes to faculty, only 31% of these institutions also included materials posted to the web and 36% of the universities claimed ownership of courseware and distance learning materials. A substantial majority of universities claim the intellectual property rights for materials that faculty are given specific assignments to produce (76%), are specifically hired to produce (76%), or are commissioned to produce (67%). Another area of concern is the increase in the number of universities that make some claims in their policies to works developed within the scope of employment or according to the Copyright Law for works-for-hire or (currently 57%).

Does anyone know of a more recent study of university policies concerning copyrighted materials in the United States?  Are there similar studies of policies in other countries?  As a side note, for a simple and helpful guide for intellectual property issues (United States) for professors offering online courses, see UC Irvine’s website.