University Software Ownership and Litigation: A First Examination

52 Pages Posted: 26 Jun 2007 Last revised: 14 May 2014

Arti K. Rai

Duke University School of Law; Duke Innovation & Entrepreneurship Initiative

John R. Allison

University of Texas - McCombs School of Business

Bhaven N. Sampat

Columbia University - Mailman School of Public Health

Date Written: April 26, 2009

Abstract

Software patents and university-owned patents represent two of the most controversial intellectual property developments of the last twenty-five years. Despite this reality, and concerns that universities act as "patent trolls" when they assert software patents in litigation against successful commercializers, no scholar has systematically examined the ownership and litigation of university software patents. In this Article, we present the first such examination. Our empirical research reveals that software patents represent a significant and growing proportion of university patent holdings. Additionally, the most important determinant of the number of software patents a university owns is not its research and development ("R&D") expenditures (whether computer science-related or otherwise) but, rather, its tendency to seek patents in other areas. In other words, universities appear to take a "one size fits all" approach to patenting their inventions. This one size fits all approach is problematic given the empirical evidence that software is likely to follow a different commercialization path than other types of invention. Thus, it is perhaps not surprising that we see a number of lawsuits in which university software patents have been used not for purposes of fostering commercialization, but instead, to extract rents in apparent holdup litigation. The Article concludes by examining whether this trend is likely to continue in the future, particularly given a 2006 Supreme Court decision that appears to diminish the holdup threat by recognizing the possibility of liability rules in patent suits, as well as recent case law that may call into question certain types of software patents.

Suggested Citation

Rai, Arti K. and Allison, John R. and Sampat, Bhaven N., University Software Ownership and Litigation: A First Examination (April 26, 2009). Duke Law School Legal Studies Paper No. 160; Duke Science, Technology & Innovation Paper No. 20. Available at SSRN: https://ssrn.com/abstract=996456 or http://dx.doi.org/10.2139/ssrn.996456

Arti Kaur Rai (Contact Author)

Duke University School of Law ( email )

210 Science Drive
Box 90362
Durham, NC 27708
United States

Duke Innovation & Entrepreneurship Initiative ( email )

215 Morris St., Suite 300
Durham, NC 27701
United States

John R. Allison

University of Texas - McCombs School of Business ( email )

CBA 5.202
University of Texas at Austin
Austin, TX 78712
United States

Bhaven N. Sampat

Columbia University - Mailman School of Public Health ( email )

600 West 168th St. 6th Floor
New York, NY 10032
United States

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