Maryland Legislator Wants To Keep State University Patents Away From Trolls (eff.org)

The EFF's "Reclaim Invention" campaign provided the template for a patent troll-fighting bill recently introduced in the Maryland legislature to guide public universities. An anonymous reader writes: The bill would "void any agreement by the university to license or transfer a patent to a patent assertion entity (or patent troll)," according to the EFF, requiring universities to manage their patent portfolios in the public interest. James Love, the director of the nonprofit Knowledge Ecology International, argues this would prevent assigning patents to "organizations who are just suing people for infringement," which is especially important for publicly-funded colleges. "You don't want public sector patents to be used in a way that's a weapon against the public." Yarden Katz, a fellow at Harvard's Berkman Klein Center for Internet amd Society, says the Maryland legislation would "set an example for other states by adopting a framework for academic research that puts public interests front and center."
The EFF has created a web page where you can encourage your own legislators to pass similar bills, and to urge universities to pledge "not to knowingly license or sell the rights of inventions, research, or innovation...to patent assertion entities, or patent trolls."

Comments

Marlyand is too little

[turkeydance]

wait for California.

Re:Marlyand is too little

[gatkinso]

It sets a legal precedent.

Re:Marlyand is too little

[slew]

It sets a legal precedent.

Under the law, you can sell your patent to whomever you want. This proposed legislation in Maryland just prevents their state universities (which are effectively controlled/directed by a board chartered by the state) from directly selling University patents to trolls. It doesn't set legal precedence, it just directs the policy of an entity that is nominally under state government control.

This law doesn't (and can't) prevent non-state universities in Maryland from doing so, or anyone else in the state for that matter. It even can't prevent the company that the University sold the patent to from later selling them to a patent troll (it only requires that the University research past practices of the entity that it licenses to, but as we know past performance doesn't guarantee future results).

In fact, depending on how some universities' independent licencing entities are legally structured, they might practically be considered patent trolls themselves (i.e., patent assertion entities whose primary business model is to assert patents or obtain licensing fees). Depending on how this law is interpreted, it might prevent the cross assignment of a patent originally created by a joint partnership industry/research group of the university from transferring the patent to the university's own licencing arm, leaving the industrial partner the only entity in Maryland legally capable of licensing a patent from a joint partnership to others (and I suspect an industrial partner probably wouldn't be financially motivated to license to competitors). Now that would some accidental unintended consequence of this bill wouldn't it?

Re:Marlyand is too little

[Overzeetop]

> Now that would some accidental unintended consequence of this bill wouldn't it?

A for-profit licencing "arm" of the state university, set up primarily for the hand-picked members of said licensing firm to benefit handsomely off of the work of the state supported university. Hmmm, yes, that would be awful to see. /s

Re:Why do state universities have patents at all?

[HEbGb]

This is a fair point. If you want to "own" the research, and the related IP, pay for it yourself.

here's a better idea

[ooloorie]

The EFF has created a web page where you can encourage your own legislators to pass similar bills, and to urge universities to pledge "not to knowingly license or sell the rights of inventions, research, or innovation...to patent assertion entities, or patent trolls."

How about publicly funded research simply end up in the public domain?

Re:here's a better idea

[Anonymous Coward]

How about publicly funded research simply end up in the public domain?

Because in the US, Congress and the courts have a habit of allowing rights holders to take works out of the public domain and place them back under copyright.

The public domain doesn't exist in the US, only an uncertainty as to whether or not you can use a work without being sued for copyright violation.

As such, any law that puts something into the public domain is a pointless gesture in the US. At least until the law is fixed, so that putting something into the public domain is a permanent act that cannot be revoked.

Re:here's a better idea

[drinkypoo]

How about publicly funded research simply end up in the public domain?

How about naming "The People" on the patent when "The People" paid for part of the development of the technology? That would give "The People" the right to exploit the patent. Presumably this isn't permitted under current patent application processes, but this seems like something which could be fixed. Under, you know, some other administration.

Re:here's a better idea

[ooloorie]

Actually, most of "The People" didn't pay a dime for the development of the technology.

In any case, placing this in the public domain would basically accomplish that.

Re: Why do state universities have patents at all?

[HEbGb]

That's completely wrong. The publication becomes 'prior art' and no patent can ever be issued.

Re:Why do state universities have patents at all?

[gatkinso]

Patents can be used to ensure that the invention remains open and free.

Re: Why do state universities have patents at all?

[Anonymous Coward]

Incorrect.
Patent can be issued.
Then a *defendant* can find and demonstrate the prior art an attempt to get the patent invalidated.

Note that the burden of proof here is shifted to the defendant, and note that patent examiners notoriously do not examine publications.

This would be childishly easy to work around

[SlaveToTheGrind]

From the bill:

THE ASSIGNMENT OF A PATENT BY A PUBLIC SENIOR HIGHER EDUCATION INSTITUTION TO A PATENT ASSERTION ENTITY SHALL BE CONSIDERED VOID AND UNENFORCEABLE.

So a middleman buys the patents, then turns around and assigns them to an assertion entity. This is often how the larger players do it anyway (so the original patent owner doesn't understand who it really is and thus jack up the price).

Re:Why do state universities have patents at all?

[TechyImmigrant]

I thought the most important thing was to fund the wages of the next American football team manager.

Violating contracts is a dangerous idea

[reemul]

I strongly oppose patent trolls, but retroactively breaking valid contracts and nullifying sales of patents because you don't like who the patent was sold to is a truly horrible idea. If you don't want patent trolls to have university patents, don't sell them to them. And fire everyone at the university involved if they do sell them. Letting the university enter into a contract and then back out with no consequence because the purchaser is engaged in a vile but legal practice does damage to our legal system that far outweighs any possible benefit. This is just a bad idea generally. The EFF should spend their time trying to get patent trolling itself banned, not damaging the sanctity of contracts generally with cheap stunts because they like some of the short term outcomes.

Re:Violating contracts is a dangerous idea

[sjames]

The problem is that the trolls don't tell you they're trolls when they buy the patent. They're good at hiding that until the deed is done. Being able to nullify after the fact is just compensating for the deceptive practice.

Re:Violating contracts is a dangerous idea

[sjames]

This legislation papers the deal in advance and saves a lot of boiler plate replication. Beyond that, since they are publicly funded, they don't get to choose.

It's hardly the first law that can void a signed contract.

As for your final point, get back to me when DRM is banned.

Re:Two things...

[slashrio]

Exactly this, it's a shit proposal if it doesn't prevent reselling at all.
I would have modded you up 5 points if I could. :)

Universities should have no patents

[WCMI92]

Because anything they produce is a WORK FORE HIRE paid for by the TAXPAYERS.

Re: Why do state universities have patents at all?

[TechyImmigrant]

Well, you thought wrong.

I googled "Highest Paid Employee by State"

Highest paid public employee in each state
Nick Saban, University of Alabama football coach, Alabama - $7.09 million.
Jim Harbaugh, University of Michigan football coach, Michigan - $7 million.
John Calipari, University of Kentucky basketball coach, Kentucky - $6.88 million.

So universities value coaches over all other employees and football coaches over other coaches.

Re:Why do state universities have patents at all?

[Theaetetus]

It's because a few years ago the US patent system was changed from "first to invent" to "first to file" which mean if the university doesn't patent it, then when they publish their work, some other company can patent it and charge royalties.

That's completely, entirely, 100% untrue. The change from first to invent to first to file simply removed interference proceedings, which is where two inventors file applications for the exact same invention, and the USPTO held a mini-trial to determine which one actually invented it first. Those are now replaced with a simple "who filed first?" rule. Big change? No. There were on average 20 interference proceedings a year, out of half a million applications.

Re: Why do state universities have patents at all?

[ChrisMaple]

The entity applying for a patent is required to cite relevant prior art - although failing to do so in a complete fashion is very rarely subject to any penalty. The patent examiner is supposed to be knowledgeable in the field and is expected to catch an application that isn't new. So it takes 2 failures (a probably malicious failure by the applicant and a probably incompetent failure by the examiner) for an invalid patent to be issued.