We'd Prefer to Speak for Ourselves, Thanks

February 6, 2008

The memorandum that circulated on Capitol Hill last week sought to reassure U.S. senators that higher education leaders, who have opposed certain aspects of a patent reform bill approved last fall by the Senate Judiciary Committee, had been dealt with satisfactorily. “University Concerns With S. 1145 Addressed by Bill as Reported by Committee,” read the headline on the document, which went on to list the ways in which the academy’s major objections “have been appropriately addressed by the bill as reported by the Judiciary Committee.”

Unfortunately, the document had been prepared not by any university or group of institutions, which have had consistently mixed feelings about the Patent Reform Act (S. 1145), but by the Coalition for Patent Fairness, an advocacy group representing major technology companies and businesses such as Amazon.com, Apple, Comcast, Google, Microsoft, Oracle and Time Warner. The coalition and its technology company members have been the most persistent advocates for the new legislation, which they say would help “America’s leading innovators and restore balance to our patent system, allowing innovation to flourish unfettered by the current rules that degrade patent quality and encourage gaming of the system.”

When higher education lobbyists learned that a document circulating on the Hill suggested that universities were satisfied with the legislation, they wondered who had produced it and which institutions were involved. The answer: none.

Higher education groups that work on patent issues immediately sprang into action, sending out alerts urging their members to “contact their Senators as soon as possible and indicate that the [coalition’s] document does not accurately express the views” of universities, as an e-mail message distributed by the National Association of State Universities and Land-Grant Colleges put it.

“The briefing paper implies that all of the university community’s concerns with S. 1145, the Patent Reform Act of 2007, have been addressed,” the land-grant association’s alert said. “CPF’s assertion is factually incorrect and misrepresents the position of the university community and individual institutions on patent reform legislation.”

A letter circulated for signature by a group of research institutions, led by the Wisconsin Alumni Research Foundation, went further. “It has been brought to our attention that certain players in the patent law reform arena, including the Coalition for Patent Fairness, have taken the liberty to speak for the university community and its position on the Senate patent reform measure.... We believe that the proper spokespersons for the positions of the university community are universities and our associations, not independent advocacy groups.”

Emery Simon, counselor to the Business Software Alliance, which is part of the Coalition for Patent Reform, crafted its memo and said that it was drafted because as supporters of the legislation made the rounds on Capitol Hill, “we were hearing that those offices were being told by universities that very little if anything had been done to address the universities’ concerns.”

The group’s objective, Simon said, “was to illuminate the fact that between introduction of the bill and the committee’s passage, a lot had been done to deal with higher education’s problems with the legislation.” The memo notes, correctly, that sponsors of the bill had made changes to resolve colleges’ two primary objections: (1) qualms about a shift to awarding patents to the “first inventor to file” for a patent rather than to the “first to invent” a particular device or product, and (2) opposition to a provision that would have expanded the rights under which a party can stake a patent claim based on being a “prior user” of the device or technology.

But the document goes on to list “additional university concerns” and to show actions that the Senate committee had taken in response to them. Most of the responses imply that the concerns have been resolved; take, for instance, this section, on “rule making authority:”

University Concerns: Universities oppose granting broad rulemaking authority to [the U.S. Patent and Trademark Office].

S. 1145 as reported: Rulemaking authority is limited to fee setting only.

Simon said it was “certainly not our intention to suggest that everything had been done and that universities were or should be satisfied, only that a lot of the things they cared about had been done.” The coalition’s members “certainly don’t purport to speak” for universities; “if we did, it would be hubris.”

The situation, he added, “is being overblown.”

John Vaughn, executive vice president at the Association of American Universities, which has worked with the land-grant group and other college associations on patent issues, said that “much of what’s in [the patent reform coalition’s memo] is accurate,” in terms of noting that Congress has indeed made some important changes. “But the overall impression, in terms of the tone and the framing of the opening paragraph, is that universities have no remaining concerns.”

In reality, Vaughn said, “a significant number of our concerns have been satisfactorily addressed, and we are hugely grateful for that. But more remains to be done," on issues such as damages for patent violations and post-grant review, "and we don’t appreciate somebody else suggesting otherwise.”

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