Worth Reading: University Responsibilities, the Patent System, Killing Startups, Free Agency, and Noteworthy TTOs

I’m pleased to bring you this month’s list of articles that we at Fuentek feel are worth reading. Many of these are pretty new, while some are oldies but goodies. Several of the pieces hovered around a similar theme, resulting in a slightly longer list despite the shorter month. Good thing we have leap day this year!

What Responsibilities Should Universities Bear? This post on the Chronicle of Higher Education WorldWise blog by University of Warwick (UK) vice-chancellor Nigel Thrift discusses the increased emphasis on universities as forces for economic growth, engines of mobility for urban and regional prosperity, and as a source for “impact,” particularly in realm of world problems. Although Thrift notes that “there is no narrative that I know of that puts [these responsibilities] all together,” IMHO the TTO is where most/all of this comes together. The trick is making sure this doesn’t result in the TTO having conflicting goals/metrics. (We’ll be blogging more about this in the weeks to come.)

Another relevant article on this topic is David Rohde’s discussion of the university as job laboratory. (Thanks go to @CSUTechTransfer for tweeting it.) We at Fuentek appreciated University of North Carolina chancellor Holden Thorp’s points about the need to create a university environment that is conducive to tech transfer. One quibble though: Making it easier for professors to start businesses is probably not the best way to slow faculty departures, since faculty entrepreneurs usually must focus exclusively on their startup venture when (that is, if) it’s successful. But those who make it big might make a big donation (such as UNC startup Quintiles’ $50M donation). At the risk of implying that their money is more important than their presence, I’m pretty sure most institutions would consider this to be a pretty sweet consolation prize for a faculty entrepreneur’s departure.

You also might consider “Kodak Is in Bankruptcy, but Its Hometown Hasn’t Lost Its Sparkle,” an NPR commentary by University of Rochester professor Adam Frank. In considering the company’s demise, Frank notes that a transition is taking place whereby the university provides hope for the future by “spinning out new knowledge, new technologies, [and] new jobs.” (On a side note, I also enjoyed reading, “Innovation Is Hard,” an IEEE Spectrum interview with Scott Anthony, author of The Little Black Book of Innovation, about why things went awry at Kodak.)

No, the Patent System Is Not Broken: Given the prevalence of negative news articles about patents recently, this is a refreshing change of pace and a worthwhile reality check. Posted in the Forbes Leadership Forum, author Kenneth Lustig of Intellectual Ventures reminds us that not all non-practicing entities (NPEs) are bad. Specifically he points out that patent trolls are the bad apples “who take advantage of the legal system to drive settlements, just as the personal injury field has its ambulance chasers and corporate law has its ‘shareholder rights trolls.’ But these few outliers are hardly the norm.”

How to Kill a University Startup: This informative and fun-to-read post by Babs Carryer, the embedded entrepreneur in Carnegie Mellon University’s Project Olympus, provides case studies and lessons learned about “three common areas where academics can benefit from a better understanding of the issues…: intellectual property, founder partnerships, and the interaction between business and science people.” (It’s nice that we’re not the only ones sharing stories from the field.)

Universities, Inventors, and the Bayh-Dole Act (download): Although published in December 2009, this paper by Sen. Birch Bayh, Joseph P. Allen, and Howard W. Bremer is still relevant, given the inclusion of tech transfer “free agency” provisions in pending legislation. Of particular interest to us here at Fuentek was the “prominent study [that] compared the underperforming Swedish technology transfer system with what Bayh-Dole established in the United States.” Bayh et al. quoted the study’s findings “that the American university system, whereby intellectual property is commonly awarded to universities, is more effective in facilitating the commercialization than the Swedish system in which rights are awarded directly to the inventors.” Definitely worth reading.

TTO Activities and Achievements: Consider these noteworthy items:

Finally, I just had to include on this month’s list “Why Explore Space? A 1970 Letter to a Nun in Africa” Despite being 40 years old, this letter eloquently reminds us what comes out of space exploration.

What do you think about the ideas presented in these articles? Do you have other recommended reading ideas? Post a comment below or sending us a private message through our Contact Us page.

Posted by Danielle McCulloch

4 Responses to Worth Reading: University Responsibilities, the Patent System, Killing Startups, Free Agency, and Noteworthy TTOs

  1. Robert Grantham says:

    Danielle thank you for posting these. I would like to comment on “No the patent system is not broken.” I found the piece very interesting……..that is, from a historical perspective. Mr. Lustig has written a fine piece on the history of patent litigation however it does nothing to shed light on why the patent system is broken. If the subject is a broken patent system then Mr. Lustig completely misses the target.

    To explain, I need to change the discussion from post grant IP activity to pre grant IP activity, that is, from licensing to patenting.

    First, the number patents where there is invalidating prior art to affect independent claims is not reflected in the number of patents that ultimately get litigated. Litigated patents are limited only to those disputes where the parties could not reach agreement. I’m not sure how you quantify this because agreements are private matters. It appears to those who observe invalidity from the patenting level that more patent disagreements settle rather than litigate.

    Second, the fact that there is a higher standard to invalidate in the courts than there is to patent at the PTO combined with the huge profits in electronics makes it strategically wise to litigate in that industry even though there is often sufficient prior art to disallow the claims at the lower PTO standard.

    Third, the patent system is considered broken because the number of patents that issue where sufficient prior art exist to disallow claims is large. Such claims are granted because the most relevant prior art is not in front of the examiner at decision-making time.

    The system is flawed because patent examiners, in general, do not have sufficient time to identify quality, e.g. pertinent and focused, prior art, especially in view of applications with dozens of claims.

    More to the point, the system is broken because the PTO mostly does not have time to ferret out the most germane art and industry has no motivation and perhaps even is dis-incentivized from identifying the prior art themselves. The prior art dichotomy is magnified in the electronics art but it definitely is not restricted to the electronics industry.

    Perhaps numbers regarding subsequently disallowed claims will become more evident after post grant opposition proceedings take effect and sufficient data is collected.

  2. We’ve expanded a bit on our approach to these ‘deep metrics’ in a new blog post, laying out how and why we use cohort analysis (measuring the viability and progression of invention disclosures) in addition to more standard tech transfer metrics like disclosures received, patents filed and licenses executed. Please take a look if you have an interest in this – we’d love to hear from other tech licensing units who’ve done similar meta-analyses of their portfolios.