Innovation and Litigation: Tensions Between Universities and Patents and How to Fix Them

93 Pages Posted: 5 Nov 2012 Last revised: 9 Jul 2013

See all articles by Jacob H. Rooksby

Jacob H. Rooksby

Gonzaga University - School of Law

Date Written: November 1, 2012

Abstract

Universities that own patents have a problem. While nearly all are keen to enhance their revenue generated from patents, few are eager or prepared to enforce them in court, alone or with their exclusive licensees, should a third party deploy a product or process covered by a university-owned patent. Yet strict prudential standing requirements imposed by the United States Court of Appeals for the Federal Circuit (“CAFC”) effectively require university participation as plaintiffs in enforcement lawsuits over their exclusively licensed patents, regardless of a university’s effective ability or enthusiasm to participate in a given action. Supported by forty years of lawsuit data and original survey and interview data collected from high-level administrators at universities that litigate patents, this Article explores in depth the complicated legal and policy tensions presented by university participation as plaintiffs in patent infringement litigation.

I offer two proposals for alleviating these tensions. The first proposal urges universities to move toward a coherent position on patent ownership and enforcement, particularly in light of recent trends in higher education finance. The second proposal outlines a potential legislative amendment to the Patent Act that would allow universities to enjoy the revenue-generation aspect of patent ownership while freeing them from the legal compulsion to participate as co-plaintiffs with their exclusive licensees in enforcement actions. This novel tweaking of the CAFC’s prudential standing requirement would save universities untold time and money that they currently spend pursuing litigation. By permitting universities to focus more on innovation and less on litigation, this proposal also would better align societal expectations for university commercialization efforts with the public interest.

Keywords: patent litigation, universities, patents, technology transfer, empirical research, NPEs, higher education, intellectual property

Suggested Citation

Rooksby, Jacob H., Innovation and Litigation: Tensions Between Universities and Patents and How to Fix Them (November 1, 2012). 15 Yale Journal of Law & Technology 312 (2013); Duquesne University School of Law Research Paper No. 2012-15. Available at SSRN: https://ssrn.com/abstract=2171237

Jacob H. Rooksby (Contact Author)

Gonzaga University - School of Law ( email )

721 N. Cincinnati Street
Spokane, WA 99220-3528
United States

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