Edited by Jacob H. Rooksby
Chapter 16: Reviewing inter partes review five years in: the view from university technology transfer offices
With the implementation of the inter partes review (“IPR”) proceeding under the America Invents Act in 2012, university technology transfer offices (“TTOs”) were worried that the value of their patents might be irreparably harmed. With IPR proceedings making patent challenges easy, relatively inexpensive, and a threat extending over the lifetime of a patent, TTOs wondered if IPRs might do nothing short of undermining their licensing business model. However, although IPRs have irreparably changed the patent infringement landscape outside of the university setting, the effect on university patents has not been nearly as severe. This Chapter explores why that might be the case. With data culled from interviews with TTO personnel from a representative sampling of large and small, public and private universities, this Chapter explains the actual rather than the assumed effect of IPR on TTO policies over the first seven years of IPR proceedings. Due partly to the early-stage nature of university patents and partly to university patent enforcement practices, there are not and have not been many IPRs involving university patents. In addition, even though TTOs do worry about IPR attacks on their patents, for a variety of reasons, TTOs have not changed their filing, budgeting, enforcement or licensing practices based on the threat of IPR. Some of this is due to tight budgeting, but it also has to do with a variety of other reasons, including questions of TTO mission, reliance on new litigation funding models, interest in state sovereignty immunity defenses to IPRs, overall changes in licensing practices especially in the physical sciences fields, and other issues. This Chapter explores what forces do in fact affect TTO filing, licensing, enforcement and budgeting policy, and why institutional policies have thus far not been affected by the threat of IPR. It concludes with some advice for TTOs looking forward to the next seven years of IPR proceedings.
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