US DOJ Antitrust Division Releases Review Letter Concerning University Patent Pool

The United States Department of Justice, Antitrust Division, (DOJ) has recently released a statement concerning the potential anticompetitive impact of a patent pool involving universities concerning patents involving “autonomous vehicles, the “Internet of Things,” and “Big Data.”  The DOJ finds that the pool is “unlikely to harm competition.”  The Press Release states:

The Justice  Department’s Antitrust Division announced today that it has completed its review of a proposed joint patent licensing pool known as the University Technology Licensing Program (UTLP).  UTLP is a proposal by participating universities to offer licenses to their physical science patents relating to specified emerging technologies.

As part of its review, the division interviewed potential participants and considered its prior guidance on patent pools.  The department has concluded that, on balance, and based on the representations in UTLP’s letter request, the proposed joint patent licensing program is unlikely to harm competition. 

“University research is a key driver of innovation,” said Acting Principal Deputy Assistant Attorney General Michael Murray for the Antitrust Division.  “In the physical science area, however, some university research may never be commercialized due to the costs associated with negotiating multiple licenses and combining the complementary university patents that may be necessary for cutting-edge implementations.  To the extent that UTLP makes it easier for universities to commercialize inventions that may be currently unlicensed and under-utilized, industry participants, university researchers, and ultimately the public can benefit.” 

Currently 15 participating universities intend to cooperate in licensing certain complementary patents through UTLP, which will be organized into curated portfolios relating to specific technology applications for autonomous vehicles, the “Internet of Things,” and “Big Data.”  The overarching goal of UTLP is to centralize the administrative costs associated with commercializing university research and help participating universities to overcome the budget, institutional relationship, and other constraints that make licensing in these areas particularly challenging for them. 

UTLP has incorporated a number of safeguards into its program to help protect competition, including admitting only non-substitutable patents, with a “safety valve” if a patent to accomplish a particular task is inadvertently included in a portfolio with another, substitutable patent.  The program also will allow potential sublicensees to choose an individual patent, a group of patents, or UTLP’s entire portfolio, thereby mitigating the risk that a licensee will be required to license more technology than it needs.  The department’s letter notes that UTLP is a mechanism that is intended to address licensing inefficiencies and institutional challenges unique to universities in the physical science context, and makes no assessment about whether this mechanism if set up in another context would have similar procompetitive benefits.

Under the Department of Justice’s business review procedure, an organization may submit a proposed action to the Antitrust Division and receive a statement as to whether the Antitrust Division currently intends to challenge the action under the antitrust laws based on the information provided.  The department’s conclusions in this business review apply only to UTLP.  They are not applicable to any other agreements or initiatives relating to patent licensing by universities or other entities.  The department reserves the right to challenge the proposed action under the antitrust laws if the actual operation of the proposed conduct proves to be anticompetitive in purpose or effect.

Copies of the business review request and the department’s response are available on the Antitrust Division’s website at https://www.justice.gov/atr/business-review-letters-and-request-letters, as well as in a file maintained by the Antitrust Documents Group of the Antitrust Division. 

The DOJ Business Review Letter is available, here.  The universities' request letter for review is available, here.  

Regulatory Changes Coming to the Bayh-Dole Act Regs?: Free Webinar

UIDP is holding a free webinar at 9:00 am Pacific Standard Time on January 14, 2021.  The webinar is titled, “Implementation of the NIST ROI Green Paper Findings.”  The description states:

Based on input from thousands of organizations in the research community, the National Institute of Standards and Technology (NIST) has recommended legislative changes to dramatically increase the ROI from the billions in government investment in research and development. This webinar will showcase the pending changes and provide information on the new opportunities and streamlined processes for universities and businesses that interact with federal labs or receive federal funding. The implications of the changes for research organizations both in the U.S. and abroad are significant.

Background: In April 2019, the National Institute of Standards and Technology (NIST) announced the release of a final green paper from its Return on Investment (ROI) Initiative for Unleashing American Innovation. This national goal aims to dramatically increase returns from the more than $150 billion per year of U.S. federal government investment in research and development. The NIST ROI Green Paper provided a summary of private and public stakeholder inputs received from hundreds of experts and organizations representing thousands of companies, universities, federal laboratories and other institutions. The document identified 15 findings by NIST to help inform decision-making and implementing actions by the relevant departments and agencies that could further enhance the U.S. innovation engine at the public-private interface. A number of the findings noted that implementation would require revisions to the Stevenson-Wydler Technology Innovation Act of 1980 or the implementing regulations to the Bayh-Dole Act. In response, NIST has vetted through informal and formal interagency processes and delivered both a legislative proposal containing 10 findings for modernizing the Stevenson-Wydler Act, and a Notice of Proposed Rulemaking for updates to the Bayh-Dole Act regulations.

The speaker is Courtney Silverthorn, the Acting Director of the Technology Partnerships Office at the National Institutes of Standards.  The moderator is Jay Schrankler, the Associate Vice President and Head of Polsky Center for Entrepreneurship & Innovation, University of Chicago.  Registration information is available, here.