14 September 2012


Two perspectives on intellectual property ...

'When Tigers Bare Teeth: A Qualitative Study of University Patent Enforcement' by Jacob Rooksby in 46 Akron Law Review (2013) comments that
University participation as plaintiffs in patent infringement litigation is an understudied phenomenon within a postsecondary terrain increasingly influenced by academic capitalist approaches to intellectual property protection and dissemination. This article presents findings from an exploratory, qualitative study of senior-level technology transfer professionals at five public universities with recent experience asserting university-owned patents in patent infringement lawsuits. Findings reveal a complex set of considerations that influence university decisions about patent enforcement, including infringer identity, concerns for litigation finance, and the licensing typology of the asserted patent. Additionally, findings suggest a complicated and close relationship between mission and money in university pursuits of patent infringers
After noting an interviewee's comment that
A patent without enforcement is a piece of paper with Dave Kappos’s signature on it. That’s all it is, you know. It’s a very expensive piece of paper. I can get Dave Kappos’s signature for a lot less than $30,000. ... If you’re not willing to enforce it, that’s all you’ve got
Rooksby concludes -
The study described in this article was driven by an interest in building understanding of university patent enforcement from the perspective of key decision-makers at universities recently involved as plaintiffs in patent infringement lawsuits. Points of inquiry included probing participants for the main factors or constraints their universities consider in determining whether to enforce their patents through infringement litigation, as well as gaining insight into institutional balancing of revenue generation and allegiance to university research mission through the pursuit of patent infringement litigation. 
Findings suggest that some universities view participation as plaintiffs in patent infringement litigation as condoned or even mandated by their research and commercialization missions, despite what some critics view as the activity’s incompatibility with the notion of a university’s public-serving mission. On a practical level, revenue generation is often a principal motivator for universities that choose to enforce their patents through infringement litigation, even though industry literature only indirectly references litigation’s revenue-generating potential. In this regard, when it comes to enforcing patents, universities’ research goals and revenue-generating goals seem deeply if not inextricably intertwined. The high cost of legal fees, as well as concern for being viewed as overly litigious (troll-like), may provide disincentives for some universities contemplating pursuit of patent infringers. While contingency fee arrangements with outside law firms can help universities counter the high cost of enforcing their patents in court, reputational risks related to these arrangements may deter their use. Additionally, the identity of would-be defendants may cause some institutions to abandon pursuit of their infringement claims out of concern for retribution to the university, particularly with respect to sponsored research funding. 
The nature of the infringed patent (i.e., whether it is exclusively licensed, non-exclusively licensed, or unlicensed) can impact decision- making as well. Concern for the responsibility and costs of litigating non- exclusively licensed patents may lead some institutions to favor an exclusive licensing strategy for their patents, on the belief that doing so will save them money and may even spare their involvement as a plaintiff in any infringement action. Although many universities may be hesitant to litigate unlicensed patents, shrewd companies have devised a way for them to turn unlicensed patents into putatively licensed ones, thereby contravening the Bayh-Dole Act’s purposes and masking the character of what some may view as speculative enforcement activity. 
Several participants noted that universities as a group tend to avoid discussion of patent infringement litigation as an aspect of technology transfer. As Simon described it, “It’s one of those things we don’t like to talk about. We like to talk about patents and licensing. But we don’t like to talk a lot about [litigation].” Examining university patent enforcement may be uncomfortable for some universities and policymakers, but overlooking the phenomenon only undermines comprehension of the net effects of university involvement in technology transfer. 
While quantitative data are growing, the study described here is the first dedicated qualitative attempt to build understanding of the nuanced factors that impact university decisions concerning patent enforcement. Its findings should encourage decision-makers at universities heavily engaged in patenting and technology transfer (as well as those just beginning to build capacity in these areas) to critically examine institutional goals and dispositions to use patent infringement litigation to protect and enhance university research missions in the public interest. In short, universities must confront a difficult but inescapable question: When it comes to enforcing our patents, will our university be a tiger with teeth?
'Intellectual Property Norms in the Tattoo Industry' by Aaron Perzanowski reports
the results of the first qualitative study of the norms surrounding creative production, ownership, and copying in the multi-billion dollar U.S. tattoo industry. Despite the availability of copyright protection, the tattoo industry has largely ignored formal law in resolving disputes over copying and use of original works. Instead, it relies on a complex set of social norms enforced through informal mechanisms. Those norms are a product of both cultural and economic factors that offer broader lessons for intellectual property law and policy.