The mouse that trolled: the long and tortuous history of a gene mutation patent that became an expensive impediment to Alzheimer's research

This case study presents the tale of the academic discovery of a rare mutation for early-onset Alzheimer''s disease that was patented by a sole inventor and licensed to a non-practicing entity (NPE), the Alzheimer''s Institute of America (AIA). Our aims are (1) to relate this story about patents, research tools, and impediments to medical progress, and (2) to inform ongoing debates about how patents affect research, disposition of university inventions, and the distribution of benefits from publicly funded research. We present an account of the hunt for Alzheimer''s genes, their patenting, assignment, and enforcement based on literature, litigation records and judicial decisions. While AIA''s litigation eventually failed, its suits against 18 defendants, including one university, one foundation, and three non-profit organizations were costly in court years, legal fees, and expert time. Reasons for the failure included non-disclosure of co-inventors, State laws on ownership and assignment of university inventions, and enablement. We discuss the policy implications of the litigation, questioning the value of patents in the research ecosystem and the role of NPEs (“patent trolls”) in biotechnological innovation. The case illustrates tactics that may be deployed against NPEs, including, avenues to invalidate patent claims, Authorization and Consent, legislative reforms specifically targeting NPEs, reforms in the America Invents Act, and judicial action and rules for judicial proceedings. In the highly competitive research environment of Alzheimer''s genetics in the 1990s, patents played a minor, subordinate role in spurring innovation. The case produces a mixed message about the patent system. It illustrates many mistakes in how patents were obtained, administered, and enforced, but, eventually, the legal system rectified these mistakes, albeit slowly, laboriously, and at great cost.     

The Proposal for a Directive on the Patentability of Computer-implemented Inventions

The European Commission Proposal for a Directive on the Patentability of Computer-implemented Inventions is an important step towards harmonising and clarifying the patent protection available for such inventions in European Member States. This paper discusses the proposed Directive, its potential impact and some initial reactions from those in the software industry. It outlines the background to the Proposal, discussing briefly the exclusion of computer programs 'as such' from patent protection under the European Patent Convention (EPC). The paper observes that, in its current form, the proposed Directive will narrow the protection currently available to patentees and that some thought should be given to transitional provisions. It concludes that, whatever balance is struck as the Directive progresses to adoption, the Directive will have the benefit of providing a mechanism for aligning the approach of European Member States to patenting computer-implemented inventions. 'Educational initiatives' may, however, be required if European companies, in particular Small and Mediumsized Enterprises (SMEs), are, as intended by the Commission, to view the harmonization and greater transparency provided by the proposed Directive as an incentive to use patents to exploit their computer-implemented inventions.     

Transfer of advanced manufacturing technology from Canadian universities to industry

Although advanced manufacturing technology (AMT) is a key factor in improving North America's industrial competitiveness, there is a problem in transferring it from university to industry. This study, conducted for a Canadian governmental agency, addresses the problem by querying Canadian professors, university-liaison officers, and administrators of intermediary (broker) organizations in order to uncover the processes of AMT transfer; that is, the ways in which technical knowledge embodied in inventions is converted into outputs used by companies. Four processes, in which the critical entities are professors, universities, intermediary organizations, and spinoffs, account for what has been transferred While the first is by far the most significant currently, the third has a high future potential. An analysis of barriers suggests that while some probably inhibit all four transfer processes, others have their impacts on only one specific process. If we are going to raise the number of transfers, we must work more diligently to pinpoint the causes for low levels of transfer. Studying the barriers to university transfer in general should therefore yield information on which barriers are associated with which processes.     

Assuring space shuttle orbiter subcontractor compliance with the NASA new technology clause

NASA's Charter demands that innovations arising from the agency's work receive the widest possible dissemination to bring about a transfer of the technology to the public welfare. This Spinoff from the Space Program is now a predictable event because of analyses done over the years by NASA and economists. However, the initial identification of innovations must be done through disclosures from NASA, prime contractor and subtier contractor employee innovators. Although NASA provides innovators with nominal cash awards for published innovations and inventions, a problem exists for NASA in assuring that all valuable innovations and inventions get promptly identified, reported and disseminated. This paper describes the technique developed by NASA's prime contractor for Shuttle Orbiter (Rockwell Space Division), which has successfully captured over 1200 innovations for NASA-JSC. Aspects of the Program described include the contract requirements, motivational techniques, results, problems, and a discussion of the results. An order of magnitude increase in innovation reporting resulted from Rockwell's activities primarily accomplished using an inexpensive four-step process implemented at about 200 subcontractor's facilities.     

University startups as a commercialization alternative: lessons from three contrasting case studies

A recent National Research Council (NRC) report (2011) recommends that universities must craft policies and allocate resources to enable more university startups because some university technologies will never be commercialized unless licensed to a startup. However, the creation of university startups requires personnel skills and programs not typically associated with an university Office of Technology Transfer (OTT). Estimates show that 75 % of university inventions are not licensed at all. The conclusions of this study include university policies to turn some them to fuel university startups. Carefully selected case studies of three contrasting universities reveal patterns of successful startup policies and performance. MIT’s case is an example of long-term success, the University of Colorado’s case is an example of medium-term success, and Auburn University’s case is an example of a new-comer to the scene. Lessons from the case studies include: the need for very early evaluation of all inventions for their startup potential, the need for pre-license seed funds through proof-of-concept programs to advance early-stage inventions to the next stage, and the need for OTT personnel skilled in enabling startups. NSF’s recent I-Corps program invests heavily in the training of potential enablers and entrepreneurs for commercializing university inventions. Based on the findings of this study, I-Corps must also invest in pre-license proof-of-concept programs to advance early-stage university inventions closer to the market. Implementing the conclusions of this study would also accomplish the recommendations of the 2011 NRC report cited above.     

Reflections on Mansfield, Technological Complexity, and the “Golden Age” of U.S. Corporate R&D

We focus on two themes, among those in Mansfield's work, particularly relevant to understanding the role of large corporations in the U.S. innovation system: (1) the development of science-based inventions into market-ready innovations, and (2) the imitation by one firm of another's technology. Both of these phenomena, we propose, depend critically on the extent of technological and organizational complexity characteristic of current products and potential innovations. Reporting on recent survey research of our own, we argue that the origins and potentially the future of U.S. leadership in technology-based economic growth lie in the complementarity of large corporations and entrepreneurial start-ups, each exploring and exploiting the market potential of different types of science-based innovations.     

Wave maker

In browsing through Columbia, the alumni magazine of Columbia University, we were struck by the article you see below because it has much to say about invention, technology development, and technology transfer. The story is well-known, the subject of several books. But we think Alvin Yudkoff's succinct treatment of it will be especially valuable to our readers. the Journal of Technology Transfer takes no sides in the historical controversies between Major Edwin Howard Armstrong, his rival inventors, and the companies and individuals who may have benefited from his inventions. We only wish they could have collaborated better or at all. Our thanks to Mr. Yudkoff and to Meg Dooley, editor-in-chief of Columbia, for their gracious permission to reprint the article.     

The role of incentives in the deployment of technologies from cooperative R&D

Over 1,400 cooperative research and development agreements (CRADAs) were in place across the U.S. Department of Energy (DOE) laboratory system in May 1995—indicating that a broad sampling of industry endorses the objectives of the National Competitiveness Technology Transfer Act of 1989. The law enables DOE's contractor-operated facilities, such as Oak Ridge National Laboratory (ORNL), to collaborate with companies, industrial consortia, universities, and even state and local governments. Positive impacts cited by industrial CRADA participants thus far include the improvement of existing products and manufacturing processes, the reduction of investment risks associated with cutting-edge research, and an increased awareness of important technical trends. However, such industrial benefits are often hard to measure; that represents a potential problem for federally funded R&D institutions, where metrics associated with tangible economic impacts are assuming greater prominence. Future political support for public/private partnerships may depend on steep growth in quantitative measures of economic value, based on the sale of patented products and services. Boosting such sales in a significant way, could, in turn, depend on the consistent application of incentive-based approaches that motivate individuals and organizations to aggressively pursue technology-based commercialization goals. In Oak Ridge, Tennessee, where Lockheed Martin Energy Systems manages ORNL and other DOE research and production facilities, broadly defined incentives have played a key role in facilitating the sale of licensed products and services. Cumulative sales totaled $102,000,000 in April 1995, with several innovations just beginning to enter the marketplace after years of engineering and product development. The same factors that impact technology deployment in these “stand-alone” licenses will play a key role in the deployment of inventions arising from CRADAs.     

Shaping the path to inventive activity: the role of past experience in R&D alliances

In this paper, we investigate a recurrent organizational event—R&D strategic alliances—and analyze its multidimensional effect on inventive activity; in particular, we examine the quality of the inventive process outcome. In so doing, we address the still-unresolved issue of the impact of past experience in explaining performance differences between firms in the realm of alliance inventiveness. Our results offer new insights concerning the crucial drivers of invention quality and technological breakthroughs. As expected, results suggest that—in the area of R&D—alliances formed by experienced partners are more likely to produce inventions that effectively synthesize technological knowledge from more diverse domains. In fact, experienced alliance partners are more likely to generate useful inventions with a greater innovative impact on others’ subsequent inventions—knowledge that can be built upon. Surprisingly, results are indeterminate with regard to whether innovation via R&D alliance increases invention’s degree of applicability across diverse scientific and technological fields that might cite its patent.     

Why university inventions rarely produce income? Bottlenecks in university technology transfer

As intended, universities have gained ownership to an increased number of inventions from their labs after the enactment of Bayh-Dole act in 1980. But, how well are the universities taking advantage of the provisions of this Act? One aspect of this question is addressed empirically in this study. An analysis of the Association of University Technology Managers (AUTM) periodic Licensing Activity Surveys of 1995–2004 indicated that the annual income generated by licensing university inventions was 1.7% of total research expenditure in 1995 and 2.9% in 2004. Some consider this and the rate of commercialization of university inventions to be too low. A premise of this study is that the slow rate of commercialization of university inventions may be due to the lack of adequate trained staff and inventions processing capacity in University Offices of Technology Transfer (UOTT). This paper describes an empirical study of the non-legal, technical, and legal invention processing capacity of US UOTT and its implications. A survey questionnaire was sent to 99 randomly selected US research universities. Seventy-five percent of the respondents mentioned shortage of staff for non-legal and legal processing of inventions. More than a third of the respondents claimed that, in 2006, they failed to process more than 26% of the inventions due to insufficient processing capacity in the UOTT. The study includes multiple regression models to estimate the effect of staffing on performance variables (i.e., Provisional Applications Filed, Patent [non-provisional] Applications and Licenses Executed) and “Inventions Not Processed” by the UOTTs due to staff/budget shortages. It is argued that, when short of staff and budget, UOTTs will be reduced to devoting their resources to ensuring patent applications are filed and patents are issued at the expense of marketing of inventions. Further, high-tech inventions are difficult to market because, often, there are no ready markets for them, especially if the inventor had no pre-invention contacts with a potential licensee. High-tech inventions originating from university labs may need market space/niche identification, new market creation, and the translation of the lab result into an “investor friendly” business plan; most UOTTs may be significantly short on these skills. Recommendations of this study are: first, an in-depth study of universities that are prolific in licensing inventions (40 or more licenses a year) is necessary to understand the reasons for their success in the context of UOTTs capacity to process inventions. Further, all federal agencies sponsoring university research must earmark a small percentage of each grant exclusively for commercialization purposes at the university. The paper offers multiple options for the effective use of these funds. The paper also offers several avenues for future research.     

The nexus between science and industry: evidence from faculty inventions

Knowledge transfer from science to industry has been shown to be beneficial for the corporate partner. In order to get a better understanding of the reasons behind these positive effects, this study focuses on the junction of science and industry by comparing characteristics of academic inventions that are transferred to industry and those staying in the public sector. Academic inventions are identified via patent applications of German academic scientists. We find that academic patents assigned to corporations are more likely to enable firms reaping short term rather than, possibly more uncertain, long-run returns, in contrast to patents that stay in the public sector. Firms also strive for academic inventions with a high blocking potential in technology markets. Academic patents issued to corporations appear to reflect less complex inventions as compared to inventions that are patented by the public science sector.     

The ambiguous Heritage of Mitteleuropa: the Resurfacing of Mitteleuropa as a Counter-image to the EU in Austrian Populism

The analysis in this article addresses the resurfacing of Mitteleuropain the populist discourse or, more precisely, the use of Mitteleuropa-ideas in the political strategies of the Austrian FPÖ (Austria's right-wing `Freedom Party'). The plans of the future European assessment spread by the European right-wing populism have an ambiguous character, which partly reproduces the ambiguity of the traditional definitions ofMitteleuropa in the debate at the beginning of the twentieth century. The article shows that the FPÖ's use of the concept ofMitteleuropa must be analysed with regard to the problem of the Austrian identity, because the ambiguous status of an ‘Austrian identity between Mitteleuropa and German re-union’ is the most important condition underpinning the emergence of the FPÖ. Secondly, the choice of a particular idea ofMitteleuropa - the Mitteleuropadefined by principles of exclusion, by a strong German culture and identity (Kulturnation), and strict reference to a Volksgemeinschaft with a territory and a culture that are juxtaposed to a cosmopolitan and liberal idea of Mitteleuropa- reveals the FPÖ's historical legacy and its opposition towards democracy and the representative institutions. Finally, the question is raised as to whether Haider should be considered not only an Austrian phenomenon, but an Austrian reaction to political and economic transformations, which evoke other protest movements in Europe. On the one hand, Haider is an Austrian phenomenon. On the other hand, he represents an Austrian reaction to political and economic transformations. In this sense, Haider's populism can be compared to France's Le Pen or Belgium's Vlaams Blokif we look at the form of popular legitimacy that they invoke, the request for a re-territorialisation of politics and for the defence of a national / European identity, and the opposition to constitutional patriotism and to all forms of ``thin'' European identities.     

The contributions of invention management companies to technology transfer

A new type of organization which is explicitly dedicated to technology transfer has emerged in the United States: Companies which manage inventions produced by universities, independent inventors and other creative groups. This paper shows that these “Invention Management Companies” (IMCs) make important and unique contributions to technology transfer on legal issues (e.g., guarding against patent infringements), marketing (e.g., convincing a company to commercialize au invention) and advocating the invention against the organized opposition of established technologies. Given the contributions of IMCs to an emerging system for encouraging innovation (an “Inventive Society”), the paper recommends broadening the role of IMCs as information providers and linking them to incubators and venture capital companies.     

Should Abused Women's Reports of Partner Substance Abuse Be Accepted as Valid?

Current research suggests that a husband's substance abuse is correlated with severity of physical abuse and the woman's decision to leave a violent situation. Often, only the battered woman's report of abuse is available. This study compares women's reports of their partners' substance use/abuse with their partners' report using a brief measure of polydrug and alcohol abuse, the Substance Abuse Subtle Screening Inventory (SASSI) and the Conflict Tactics Scale (CTS). Data were analyzed for 25 recovery couples and 25 nonrecovery couples. The correlations for all 50 couples between the male's reported use and the female's report of her partner's use on the SASSI and the CTS were significant on all but one of the CTS scales. They ranged on SASSI from .73 to .33 and from .31 to .06 on the CTS. This suggests that the SASSI and possibly the CTS could be used as valuable tools for assessing women's reports of their partner's substance use/abuse.     

Effects on academia-industry collaboration of extending university property rights

Several recent studies show European university scientists contributing far more frequently to company-owned patented inventions than they do to patents owned by universities or by the academic scientists themselves. Recognising the significance of this channel for direct commercialisation of European academic research makes it important to understand its response to current Bayh-Dole inspired reforms of university patenting rights. This paper studies the contribution from university scientists to inventions patented by dedicated biotech firms (DBFs) specialised in drug discovery in Denmark and Sweden, which in this respect share a number of structural and historic characteristics. It examines effects of the Danish Law on University Patenting (LUP) effective January 2000, which transferred to the employer university rights to patents on inventions made by Danish university scientists alone or as participants in collaborative research with industry. Sweden so far has left property rights with academic scientists, as they also were in Denmark prior to the reform. Consequently, comparison of Danish and Swedish research collaboration before and after LUP offers a quasi-controlled experiment, bringing out effects on joint research of university IPR reform. In original data on all 3,640 inventor contributions behind the 1,087 patents filed by Danish and Swedish DBFs 1990–2004, Difference-in-Difference regressions uncover notable LUP-induced effects in the form of significant reductions in contributions from Danish domestic academic inventors, combined with a simultaneous substitutive increase of non-Danish academic inventors. A moderate increase in academic inventions channelled into university owned-patents does appear after LUP. But the larger part of the inventive potential of academia, previously mobilised into company-owned patents, seems to have been rendered inactive as a result of the reform. As a likely explanation of these effects the paper suggests that exploratory research, the typical target of joint university-DBF projects in drug discovery, fits poorly into LUP’s requirement for ex ante allocation of IPR. The Pre-LUP convention of IPR allocated to the industrial partner in return for research funding and publication rights to the academic partner may have offered more effective contracting for this type of research. There are indications that LUP, outside the exploratory agenda of drug discovery, offers a more productive framework for inventions requiring less complicated and uncertain post-discovery R&D.

A policy for enhancing the disclosure of university faculty invention

Faculty scientists often avoid disclosing their inventions to the university’s technology licensing office (TLO), opting instead to self-license their invention. As this paper argues, TLO’s can achieve full disclosure by allowing faculty scientists to self-license their invention in return for some form of non-pecuniary “insurance”, just in case they fail in self-licensing their technology.     

Sustainability of patent-based competitive advantage in the U.S. communications services industry

Patents have long been assumed to provide firms with competitive advantage, but longitudinal results suggest that some types of patent content provide more enduring advantage than others do. The duration of advantage appeared to wane with time in the highly-dynamic U.S. communications-services industry during a period when technological changes occurred rapidly within it (1998–2012). Results suggest patents integrating technology streams that were different from the technologies of focal-patents’ grants contributed more to sustaining firms’ profit margins during this period than did focal patents that exploited extant technological knowledge. We found that firms who continually pushed their organization’s knowledge envelope outward to incorporate more unknown technologies sustained higher profit margins for a longer duration of time than did firms whose patented inventions were predominantlyincremental—even within difficult settings where competition grew so intense that firms’ average operating margins were deteriorating.     

Violence in relationships: A seventh grade inventory of knowledge and attitudes

The purpose of this research was to contribute to existing efforts of battered women's advocates, schools, and researchers by developing a valid and reliable inventory to evaluate educational interventions regarding violence in relationships. Content validity was established by national experts (N=32)solicited to complete an inventory rating scale and comment on the statements' ability to elicit early adolescents' knowledge and attitudes about violence in relation-ships. The revised inventory was tested with seventh grade health education students (N=99).The test-retest reliability criterion was .50. Spearman's rho correlations were .566 for the knowledge section and .669 for the attitude section. Knowledge and attitude sections were measured for internal con- sistency with Cronbach's alpha, with respective values of .3178 and .7207. Item analyses with Wilcoxon Rank Sum tests identified 11 knowledge statements and one attitude statement as significantly discriminating at both test and retest. Gender differences were noted and additional findings were reported. Recommendations for the further establishment of a valid and reliable inventory were made.     

非法使用他人技术秘密完成发明创造的权利归属问题研究

非法使用他人技术秘密完成发明创造的权利归属规则需基于“使用商业秘密”的具体行为类型分别确定。非法使用人直接使用他人技术秘密完成之发明创造系由他人技术秘密直接转化而来,技术秘密权利人可通过变更专利权权属的方式要求非法使用人返还其无形财产。非法使用人根据他人技术秘密调整、优化、改进自身技术方案后完成之发明创造的实质性特点皆由非法使用人创造性地贡献之,故其专利权应归属于非法使用人。非法使用人对技术秘密进行修改、改进后完成之发明创造的实质性特点,尽管由非法使用人与技术秘密权利人共同贡献,但由于双方缺乏能够形成专利权共有关系的法律或事实依据,故其不能由双方共有。此时,专利权权属可由非法使用人主张,技术秘密权利人可主张先用权抗辩。