AUTM members, please feel free to use this document when making presentations about
Hot topics are issues in which AUTM and its members are actively engaged. Current hot topics include:
H.R. 3309, “The Innovation Act” has progressed very rapidly through congress after being introduced by Representative Bob Goodlatte (R. – Va).
The sponsors of the bill intend it to target and minimize abusive patent litigation – often referred to as the “patent troll” problem. This statement summarizes the opposition to the bill in its current form. The letter was submitted by AUTM and several associations within the higher education community including: American Council on Education (ACE), Association of American Medical Colleges (AAMC), Association of American Universities (AAU); Association of Public and Land-grant Universities (APLU); Council on Governmental Relations (COGR).
Other letters expressing opposition have been submitted by many interest groups, including the Licensing Executives Society (LES), IEEE-USA, Entrepreneurs for Growth, the Medical Device Manufacturers Association, the Patent Office Professional Association, the Innovation Alliance, the National Small Business Association and the Small Business Technology Council.
Following consideration by the House Rules Committee on December 3, we expect a vote on December 5 on the Innovation Act (H.R. 3309).
Because amendments either would provide insufficient improvement if they pass or would provide sufficient improvement but will not pass (the Conyers/Watt substitute), the emphasis of the university message needs to remain to convey and confirm to vote NO on the final bill.
The higher education associations support the following amendments:
AMENDMENT: Watt (NC) – would allow the court to reduce or deny the fees going to the prevailing party for engaging in “conduct that unduly and unreasonably protracted the final resolution of the matter in controversy.”
AMENDMENT: Massie (KY) – would strike the entire customer stays section. This is the section intended to protect innocent retail end-users who are “customers” of the manufacturer of the allegedly infringing product, but the amendment is written so broadly that anyone along the often long and convoluted product chain could be stayed, allowing collusion among parties in the chain to secure protection not warranted and undermining that ability to assert patent rights – once again, a case where the provision could impede bad troll-like behavior but also compromise legitimate patent enforcement.
AMENDMENT: Rohrabacher (CA) - Strikes 9(a) from the bill and reorder the remaining subsections of Section 9. This amendment would reinstate Sec. 145, which is struck under 9(a). Sec. 145 is a little- used but important provision that allows a patent applicant dissatisfied with a PTO decision to appeal that decision under certain circumstances directly to the Federal District Court.
SUBSTITUTE: Conyers (MI)/Watt (NC) – Promotes
transparency in patent ownership; protects customers who are targeted in
infringement suits; directs the PTO to develop educational resources for
small businesses; instructs the PTO and others to prepare reports on
several issues including the use of deceptive demand letters.
Though there are some problems with the substitute, it would effectively
address most key university concerns so that the higher education
associations would support the bill if the substitute passed; as noted
above, however, that is virtually certain not to occur.
H.R. 2981, The TRANSFER Act of 2013 was introduced in the House of Representatives by Rep. Collins (NY). AUTM supports this legislation and collaborated with House staff and colleagues at other higher education associations in contributing language for the bill. AUTM joined other higher education associations in sending a letter of support for the bill to the House Committee on Science, Space and Technology. AUTM is very encouraged by the interest in the House to support technology transfer efforts in broad measures. We will continue to bring you updates on the progression of the legislation.
This bill will allow federal agencies to award grants for:
If you are interested in providing input or commentary on this issue please join the Advocacy Network in the AUTM Communities. If you’re on Twitter, please show your support by Tweeting I support the #TRANSFER Act.
For questions contact email@example.com.
Be an advocate for this important piece of legislation. For
background information on the Bayh-Dole Act, as well as talking points
and tools you can use to advocate, visit the AUTM
Bayh-Dole Act page.
The AMP v. USPTO Remand: Déjà Vu as Federal
Circuit Majority Reaffirms that Myriad’s Isolated DNA Sequences
Are Patent-Eligible, Eric W. Guttag,
Eric W. Guttag IP Law Office. Read the full analysis.
"A U.S. federal appeals court has once again affirmed the right of Myriad Genetics Inc to patent two genes linked to breast and ovarian cancer," Reuters, Aug. 16. Read more.
AUTM and other university associations submitted comments on proposed rules and guidance to implement the first-inventor-to-file provisions of the America Invents Act. Read the submission here.
Traditionally, the only parties involved in the international phase of the Patent Cooperation Treaty (PCT) have been the applicant and the Offices conducting the processing. But the PCT observation service now permits third parties to submit observations relating to published PCT applications during the international phase of processing. The USPTO also recently implemented such a system, as part of the America Invents Act. Read more here.
Free agency is a concept which would allow university faculty to shop discoveries to any technology transfer office for licensing—regardless of where the research was conducted. Learn more.
AUTM has undertaken the task of recognizing the various interests of stakeholders in academic commercialization process, and has advanced the concept of quantifying the expectations each party vested in the process may reasonably hold by establishing the AUTM Guidelines for Balancing Stakeholders’ Interests. The guidelines seek to define and balance these varied and sometimes only partially aligned interests. Read more.
AUTM submitted its response to the Request for Information on the Commercialization of University Research issued by the Office of Science and Technology Policy and the National Economic Council. As stated in the request, "transferring viable research discoveries to the marketplace that can pose the greatest challange to innovators and entrepreneurs." Read AUTM's response here.
Gene patents and licensing practices have recently come under
scrutiny following the Secretary's Advisory Committee on Genetics,
Health, and Society (SACGHS) release of its Public Consultation
Draft Report on Gene Patents and Licensing Practices and Their Impact on
Patient Access to Genetic Tests. For more on this issue visit
Patents and Licensing Practices page.
AUTM keeps a watchful eye on certain public policy issues regardless of whether or not there is specific action to be taken at the present time. For more information, visit the on ongoing public policy issues page. Ongoing public policy issues include:
AUTM educates and communicates with public officials - rather than lobbying according to the wishes of any segment of the overall AUTM membership - and seeks to keep members informed about issues and legislative activity so individuals may respond in a way appropriate to their particular circumstances. However, certain issues arise where the association is called to take a position. AUTM identifies when such action is appropriate by following certain guidelines for taking a formal position.
To view an archive of past issues, click here.