This is uniquely disruptive to the biotech industry – holdups and trolling are common university practice

[Rebecca, Robert, “Universities: The Fallen Angels of Bayh-Dole?” Daedalus 147.4, GDI-JCR]

Universities have, in many cases, pursued patents that they could enforce against product-developing firms for the evident purpose of getting a piece of the action in lucrative technologies that were already being actively developed without the need for university patents. They have sometimes worn their academic halos to court, seeking to adapt patent doctrine to privilege the interests of universities over the competing interests of product-developing firms. This agenda has met with considerable skepticism from the Federal Circuit, which has sometimes explicitly questioned whether university patents are promoting or impeding commercial product development. An early sign that universities were pursuing patents that were unnecessary for commercial development was the involvement of universities in interference proceedings–administrative proceedings within the U.S. Patent and Trademark Office to determine priority of invention–in which the university claimed to have made the invention before a commercial inventor. When a university competes with a near-simultaneous commercial inventor seeking patent rights on the same invention, it is difficult to argue that the university is just trying to preserve incentives for commercialization of an invention that would otherwise fail to attract commercial interest. Interferences are only available to establish priority for patent applications filed before March 16, 2013, when U.S. law changed to award priority to the first inventor to file a patent application rather than to the first to make the invention.20 But before that date, interferences were especially common in biotechnology, a field in which multiple research teams often compete intensely to reach the same goals (such as cloning an obviously important gene). Health policy scholars Jonathan Merz and Michelle Henry found that interferences in biotechnology and organic chemistry were six times more frequent than for patents on average, and that most of the highly competitive “races” the authors cited involved academic research institutions.21 Having to litigate a costly interference against a university can only increase the costs and risks facing a product-developing firm. Yet universities persisted in these costly battles, appealing to the Federal Circuit when they lost in the Patent Office. In a priority dispute between academic patent applicants and a pharmaceutical firm over an assay to identify anticancer compounds, for example, the University of Texas Southwestern Medical School pursued repeated appeals to the Federal Circuit, although presumably the firm’s commercialization incentives would have been adequately protected by its own already-issued patent on the same invention.22 Another strategy for universities more interested in revenues than in promoting product development is to seek broad patent rights on the basis of preliminary academic research that would allow them to sue private firms that later develop products not disclosed in the university patent applications. The Federal Circuit has been consistently hostile to these efforts, invalidating university patents in a series of decisions that fortified the patent law requirement that a patent application must include a “written description” of the invention.2