Wisconsin Advanced Technology Advocates, Inc.

Congress deals funding blow to Patent Office

Budget strips $100 million provision for backlogged agency

By John Schmid of the Journal Sentinel

Posted: Dec. 29, 2009

The $1.1 trillion spending bill that Congress passed this month bankrolls thousands of pet projects: the World Food Prize in Iowa, a farmers market in Kentucky, and a 12-mile bike path in Michigan, among many others.

And to pay for a fraction of its largesse, Congress added one late change to the budget: It slapped a restrictive spending ceiling on the U.S. Patent and Trademark Office, further cramping an agency that was already incapacitated by more than a decade of congressional raids on its fees. 

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Wisconsin Alumni Research Foundation settles suit against Intel

Madison — The University of Wisconsin-Madison's patenting arm has settled its infringement lawsuit against computer chipmaker Intel Corp. involving technology used in a popular computer processor.

The case was expected to go to trial Monday in U.S. District Court in Madison, but both sides notified the court Friday they had reached a settlement. Details were not released, and Intel spokesman Chuck Mulloy said he could not comment because the terms were confidential.

The Wisconsin Alumni Research Foundation sued Santa Clara, Calif.-based Intel in February 2008, alleging that technology used in Intel's Core 2 Duo Processor and others was created by university researchers but used by Intel without a licensing agreement.

The lawsuit claimed the micro-architecture of the Intel Core family of processors infringed on a 1998 patent based on work by four researchers, including Gurindar Sohi, a computer science professor. Intel had supported Sohi's research with about $90,000 in gifts in the 1990s and argued it was entitled to the intellectual property that resulted from the funding.

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Patent backlog clogs recovery

Agency’s inability to keep pace undermines American innovation, competitiveness

By John Schmid and Ben Poston of the Journal Sentinel

Posted: Aug. 15, 2009

First of two parts

Alexandria, Va. — On a campus of boxy office buildings nine miles outside Washington, D.C., some 6,300 patent examiners hold the nation's economic future in their hands.

The next Google. The next iPhone. The next Viagra.

All could be fueled by inventions awaiting the 20 years of protection afforded by a U.S. patent - if only the patent examiners could catch up.

But they can't. The federal system of granting patents to businesses and entrepreneurs has become overwhelmed by the growing volume and complexity of the applications it receives, creating a massive backlog that by its own reckoning could take at least six years to get under control, the Journal Sentinel has found.

Amid the worst downturn since the Great Depression, the U.S. Patent and Trademark Office could be seen as a way to jump-start the economy. Instead, it sits on applications for years, placing inventors at risk of losing their ideas to savvy competitors at home and abroad.

The agency took 3.5 years, on average, for each patent it issued in 2008, a Journal Sentinel analysis of patent data shows. That's more than twice the agency's benchmark of 18 months to deal with a patent request.

The total number of applications waiting for approval, more than 1.2 million, nearly tripled from 10 years earlier.

The Journal Sentinel also found:

• Under a practice that Congress authorized a decade ago, the Patent Office publishes applications on its Web site 18 months after the inventor files them, outlining each innovation in detail regardless of whether an examiner has begun considering the application. The system invites competitors anywhere in the world to steal ideas.

• For more than a dozen years starting in 1992, Congress siphoned off a total of $752 million in fees from the Patent Office to pay for unrelated federal projects, decimating the agency's ability to hire and train new examiners.

• As its backlog grew, the Patent Office began rejecting applications at an unprecedented pace. Where seven of 10 applications led to patents less than a decade ago, fewer than half are approved today - a shift that a federal appeals judge termed "suspicious." The same judge calls the agency "practically dysfunctional."

• Staff turnover has become epidemic. Experts say it takes at least three years for a patent examiner to gain competence, and yet one examiner has been quitting on average for every two the agency hires.

• Patent activity, a widely accepted barometer of innovation, is showing exponential growth in increasingly competitive economies such as China, South Korea and India. As developing economies strive to commercialize and protect their technologies throughout the world, they add tremendously to the U.S. Patent Office's workload.

• In many cases, applications languish so long that the technology they seek to protect becomes obsolete, or a product loses the interest of investors who could give it a chance at commercial success. "Patents are becoming commercially irrelevant to product life cycles," said John White, a patent attorney and former examiner.

For an American start-up company, a patent application is often the only asset, which creates a Catch-22: Start-ups often need a patent in order to get funding; yet without that funding, entrepreneurs can't afford the mounting fees and legal costs to keep the patent application alive or to fend off infringers.

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UW has no right to portion of surgeon's huge royalty payments

Todd Finkelmeyer  —  1/21/2009 1:50 pm

University of Wisconsin-Madison orthopedic surgeon and researcher Dr. Thomas Zdeblick has received millions of dollars in royalty payments from a medical device company for a variety of spinal implants he helped invent, according to an investigation recently made public by Sen. Charles Grassley, R-Iowa.

But a review by The Capital Times finds that the university has no legal right to share in Zdeblick's  windfall. University policy only requires its researchers to patent inventions through the Wisconsin Alumni Research Foundation if their discoveries are funded with federal money.

"The policy at the university is you start with the presumption that faculty and staff own their own intellectual property," said Carl Gulbrandsen, managing director of WARF. "Then it becomes an issue of funding source. And if it's not federally funded research, they don't have to go through WARF. We try to be user-friendly and add value, but not everyone goes through us."

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MSOE completes first patent license

Illinois company given license to TetraLattice technology

By KATHLEEN GALLAGHER
kgallagher@journalsentinel.com

Posted: Sept. 22, 2008

Some universities knock on many doors to find companies to license their patents.

Milwaukee School of Engineering didn’t knock on even one. An Elgin, Ill., company found the Milwaukee university instead.

MSOE said Monday it has completed its first license for a patent.

The school’s rapid prototyping lab agreed to give an exclusive license for certain applications of its TetraLattice technology to DSM Somos, a subsidiary of DSM Desotech Inc.

“I’m not out marketing; they came to us. They know us because our reputation in rapid prototyping is quite wide,” said Tom Bray, MSOE’s dean of applied research.

The school’s TetraLattice technology can take computer drawings and create complex, three-dimensional structures with interiors made of sturdy lattices rather than solid material.

Watching the technology work is like watching an object appear to rise out of liquid, Bray said.

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U.S. Patent Office Issues Certificates to Uphold WARF Stem Cell Patents (Jun 26, 2008)

 June 26, 2008
Contact: Janet Kelly (608 )890-1491, jkelly@warf.org

U.S. Patent Office Issues Certificates to Uphold WARF Stem Cell Patents
Action Concludes Reexam for University of Wisconsin-Madison's Most Important Base Embryonic Stem Cell Discoveries

Madison, Wis. – The United States Patent and Trademark Office has issued Reexamination Certificates for the two most important base embryonic stem cell patents held by the Wisconsin Alumni Research Foundation (WARF). This action officially concludes a reexamination process for these patents that began in October 2006, and was decided in WARF's favor in March of this year.

The patent office issued certificates for patents ?780 and ?806, which date back more than a decade to the breakthrough discovery of the isolation and culture of primate and human embryonic stem cells made at the University of Wisconsin-Madison. This ruling is not appealable, which means that the claims of these patents stand confirmed and enforceable.

"We are extremely pleased that the patent office has officially concluded these reexaminations," states Carl Gulbrandsen, WARF managing director. "Due to the patent office's extremely thorough and detailed reexaminations, we feel our patents are stronger than ever and affirm that Dr. James Thomson's groundbreaking discoveries are patentable inventions."

Thomson, the renowned stem cell researcher and pioneer, is a professor of anatomy at the UW-Madison and recently was appointed director of regenerative biology at the Morgridge Institute for Research, part of the new Wisconsin Institutes for Discovery.

The challenge to the patents was brought by the New York-based Public Patent Foundation and the California-based Foundation for Taxpayer and Consumer Rights. A third patent, ?913, also was included in the challenge and was upheld earlier this year. However, as this more recently issued patent follows a slightly different process, it still is subject to appeal by the third-party requestor.

Gulbrandsen noted that patent protection is vital for attracting the significant private sector investment necessary to develop commercial applications for stem cells. "Human embryonic stem cells provide researchers powerful tools for testing drugs at the cellular level, which may lead to astonishing advances in pharmaceutical development, particularly in the field of personalized medicine, and reduce reliance on animal testing. They also have the potential to offer new treatments and cures for devastating diseases such as diabetes, Parkinson's, Alzheimer's and spinal cord injuries that afflict millions of people around the world," he states.

"But, it takes millions upon millions of dollars to develop and bring new medical discoveries to market, and without patents to protect their investments and the opportunity to generate profits, companies will not commit resources to the lengthy and costly development and clinical trials process."

Since the announcement that its patents were upheld, WARF has seen increased interest in licensing its stem cell technologies. It currently has completed 30 license agreements with 25 companies, including an agreement just signed with Invitrogen Corporation last month. Gulbrandsen notes that any revenues WARF earns from licensing these and other technologies to companies is used to support further research at the UW-Madison.

In addition, WARF continues to support the distribution of cell lines and methodologies for isolating and culturing human embryonic stem cells to researchers through its affiliate, the nonprofit WiCell Research Institute. WiCell, which hosts the National Stem Cell Bank, has fulfilled more than 900 free academic licenses for patent rights to stem cells and has shipped cells to more than 500 researchers in 25 countries and 40 states.

Academic scientists using these cell lines and methodologies face no restrictions on patenting or publishing their own novel work. Currently, two vials containing approximately six million stem cell that are capable of establishing multiple new colonies are priced for academic researchers at $500.

WARF was established as the world's first university-based technology transfer office in 1925. As a private, nonprofit foundation, it supports world class research at the University of Wisconsin-Madison by funding research, protecting the intellectual property of the university faculty, staff and students and by licensing inventions resulting from their work to benefit humankind.

Two UW stem-cell patents upheld

By David Wahlberg

608-252-6125
March 11, 2008

The federal government has upheld two more UW-Madison stem-cell patents, meaning all three patents under contention can stand.

But expected appeals on one of the patents could linger for years. And the government review caused the university to narrow some patent claims and loosen its licensing policies, the patent challengers say.

The Wisconsin Alumni Research Foundation, UW-Madison 's tech-transfer organization, holds the patents, based on work by campus stem-cell pioneer James Thomson. The patents essentially cover all human embryonic stem-cell research in the country.

WARF, which has earned more than $3.2 million from patents, stands to gain many millions more. Scientists are using the cells to better understand and develop possible treatments for diabetes, Parkinson 's disease and other conditions.

The U.S. Patent and Trademark Office 's decision to uphold the two patents, announced Tuesday, was made last week. The patent office upheld the third patent last month.

"This is a home run, " said Carl Gulbrandsen, managing director of WARF. "I said from the beginning that we feel they were patentable inventions and that we would ultimately prevail. "

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Congressional Budget Office: Patent bill cost exceeds expected revenue

By Andrew Noyes CongressDaily February 19, 2008

Legislation making sweeping changes in patent law that is slated for Senate debate in the coming weeks would increase federal spending by $26.9 billion and boost revenue by $25.5 billion over a nine-year period beginning in 2009, according to a CBO analysis released late last week.

The legislation sponsored by Senate Judiciary Chairman Patrick Leahy, D-Vt., would alter the rule that prioritizes the award of a patent from the "first to invent" to the first inventor to file; increase the Patent and Trademark Office's authority to collect and spend fees; and institute a number of litigation-related changes. A sizable shift on the federal balance sheet would result from language to make permanent the PTO's authority over money collected from patent and trademark applications, CBO said. Compliance costs could be $200 million annually starting in 2009, with most of the financial burden falling on the private sector, officials said.

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WARF stem cell patent claim upheld by patent office

Bill Novak

February 28, 2008

The Wisconsin Alumni Research Foundation has won a key patent battle for one of its stem cell patents, after the U.S. Patent and Trademark Office upheld the foundation's claim to the patent.

The decision affirms WARF's contention that an initial UW-Madison human embryonic stem cell discovery is a patentable invention.

The decision was announced in a press release this morning from WARF.

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UW accuses Intel in federal lawsuit

Research arm alleges patent violation

By PAUL GORES

Intel Corp.'s popular Core 2 Duo processor, the brain of many of today's personal computers, includes technology created by University of Wisconsin-Madison researchers, according to a federal lawsuit accusing Intel of patent infringement.

The Wisconsin Alumni Research Foundation, the university's licensing arm, claims that while its application for a patent on the technology was pending, one of its inventors met with Intel and offered to discuss licensing it for use in future Intel products.

But instead of discussing licensing, Intel incorporated the patented technology into its products, including the Core 2 Duo processor, the research foundation's lawsuit says. Intel refuses to obtain a license from the research foundation, the lawsuit contends,

The lawsuit characterizes the technology, which improves computer efficiency and speed, as "a pioneering invention that has been widely recognized as a significant advance in computer microprocessing both by researchers in the field and those in industry."

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