Earlier this year,135 university leaders across the country joined together in a pledge (pdf) to undertake greater efforts in commercializing university technology and to “ensure that the knowledge and technological breakthroughs developed through campus-based research was rapidly and broadly disseminated to advance the nation’s social and economic interests.” On September 16^th of this year – the same day that President Obama signed the America Invents Act into law – more than 40 of these universities released announcements discussing some of the specific efforts they have undertaken or plan to explore in response to their pledge.  A news release (pdf) from the Association of Public and Land-Grant Universities contains links to these announcements, including from New York University, SUNY Buffalo, and the University of Rochester, among others. A recent blog post from the Office of Science and Technology Policy at the White House (“America's Universities Growing the Economy With “Lab to Market” Initiatives”) further outlines some of the efforts planned by these universities.

Case:  CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP (W.D.Pa. 9-28-2011) What happened: Carnegie Mellon University tech transfer office circulated an invention disclosure relating to disc drives. The tech transfer office was informed that a different inventor from Seagate had previous worked on a similar technology, but the Seagate inventor stated that, “[The Carnegie Mellon professors’] invention is related, but goes beyond my work and is probably more interesting." It is unclear whether the tech transfer office knew that Seagate had already filed a patent application on the earlier work of its inventor. Perhaps not surprisingly given the encouragement of the Seagate inventor, Carnegie Mellon filed patent applications on the work of its inventors. In the fullness of time, Seagate got a patent for its early work and Carnegie Mellon got two patents for its later developments and refinements. Carnegie Mellon proceeded to sue Marvell for patent infringement. Marvell is defended based on the theory that many of the claims of the Carnegie Mellon patents were anticipated by the prior art Seagate patent. Decision: No summary judgment of invalidity because the claims of the Carnegie Mellon patents had certain limitations not disclosed in the Seagate patent. Comment: It does not appear that the Seagate work was cited to the U.S. Patent Office during examination of the Carnegie Mellon patents. If the Seagate work was not cited, then this may have been due to the fact that the Seagate application was not published (this was back in the 1990’s) and further because the Seagate patent had not yet issued (it would not issue until several years after the initial Carnegie Mellon application was issued). It is not clear how much the Carnegie Mellon tech transfer office even knew about the specifics of the earlier Seagate work when they were prosecuting the Carnegie Mellon patent applications. It is difficult to say whether Carnegie Mellon would have been in a better or worse position if the tech transfer office had investigated the early Seagate work as soon as they found out about it, and had explicitly dealt with the early Seagate work in the text of the Carnegie Mellon patent applications themselves. Importantly, the district court opinion does not suggest there was any duty to investigate the early Seagate work on the part of the Carnegie Mellon tech transfer office. From a practical perspective, things seem to be going well for Carnegie Mellon on these patents at least at this point.

At the Innovation website, Ben Ray Lujan cites a new study that shows the importance of tech transfer with respect to federally-funded technology. Moneyquote:

A major study of the current state of affairs of technology transfer across the federal government was recently released by the Institute for Defense Analyses Science and Technology Policy Institute . . . In the first such study in a decade, one of the major findings is that: “support from agency leadership and laboratory directors can have a marked effect on technology transfer and commercialization activities. For example, laboratory directors who support technology transfer may provide resources, flexibility and creative license to their ORTAs (Office of Research and Technology Applications]. Those ORTAs who are not supported by their laboratory leadership can be severely constrained.

This would seem to be common sense, but it is nice to see it acknowledged.