University of the Pacific

 

Event Title

Universities and Patents

Location

Biology Building, Room 101

Start Date

18-4-2019 6:00 PM

End Date

18-4-2019 7:00 PM

Description

Universities play a critical role in the creation and dissemination of knowledge. In particular, university technology transfer offices and patents have received considerable attention since the passage of the federal Bayh-Dole Act in 1980, which allows universities and other nonprofits to take title to government funded invention. Grant recipients are allowed to take title because of a concern with the tragedy of “underuse” of government funded inventions. Many government funded inventions were not commercialized prior to the passage of the Act. Since then, university involvement in patenting and licensing has increased substantially and continues to rise. Numerous questions concerning the unintended consequences of the Act have been raised, such as: the development of an anticommons; shifting researchers from basic to applied research projects; and enforcement efforts by universities that resemble the behavior of so-called patent trolls. In examining numerous sources, this talk will present and discuss data concerning patent enforcement of U.S. patents by universities, the reasons why universities may continue to enforce their patents, and how universities can avoid the negative "patent troll" label.

Speaker Bio

Mike Mireles is a Professor of Law at and graduate of McGeorge School of Law. He recently presented on related topics at the Stanford University Law School Patent Litigation Symposium; University of Kentucky Law School; Wake Forest University Law School; China University of Political Science and Law in Beijing, China; the Shanghai Jiao Tung University, KoGuan School of Law; Beijing International Studies University; VIT University Law School in Chennai, India; and the East China University of Political Science and Law in Shanghai, China. He was invited to and participated in workshops on related subjects at the European Commission in Brussels, Belgium, and has published numerous papers on universities, patents, and trademarks, including in the following journals, University of Michigan Journal of Law Reform, Minnesota Journal of Law, Science and Technology, University of Texas Intellectual Property Law Review, Cardozo Law Review, Southern Methodist University Law Review, and Oxford University Press' Journal of Intellectual Property Law and Practice. In April of 2019, Professor Mireles will co-host a conference at McGeorge titled "The Changing Regulation Concerning Biopharmaceuticals: Pricing, Intellectual Property, Ethics and Trade," which is cosponsored by Drake University Law School, Texas A&M Law School, Wake Forest University Law School, the University of Copenhagen Centre for Advanced Studies of Biomedical Innovation Law and the Novo Nordisk Foundation; VIT University Law School in Chennai, India; China University of Political Science and Law in Beijing, China; Schinders Law; and the Biotechnology Innovation Organization. The conference will feature 40 speakers from around the world. After Law School at Pacific, he practiced law with the Downey Brand law firm in Sacramento and clerked for Judge S. Jay Plager at the U.S. Court of Appeals for the Federal Circuit in Washington DC.

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Apr 18th, 6:00 PM Apr 18th, 7:00 PM

Universities and Patents

Biology Building, Room 101

Universities play a critical role in the creation and dissemination of knowledge. In particular, university technology transfer offices and patents have received considerable attention since the passage of the federal Bayh-Dole Act in 1980, which allows universities and other nonprofits to take title to government funded invention. Grant recipients are allowed to take title because of a concern with the tragedy of “underuse” of government funded inventions. Many government funded inventions were not commercialized prior to the passage of the Act. Since then, university involvement in patenting and licensing has increased substantially and continues to rise. Numerous questions concerning the unintended consequences of the Act have been raised, such as: the development of an anticommons; shifting researchers from basic to applied research projects; and enforcement efforts by universities that resemble the behavior of so-called patent trolls. In examining numerous sources, this talk will present and discuss data concerning patent enforcement of U.S. patents by universities, the reasons why universities may continue to enforce their patents, and how universities can avoid the negative "patent troll" label.