Skip to main content Accessibility help
×
Home
  • Print publication year: 2011
  • Online publication date: December 2011

13 - University Software Ownership and Litigation

from Part IV - Perspectives on the University Innovation

Summary

Software patents and university-owned patents represent two of the most controversial intellectual property developments of the past few decades. Various scholars have quarreled with the alleged vagueness and undue breadth of software patent claims. Some have also suggested that, given the poor quality of prior art documentation and patent examiner training in the area of software, many issued software patents are likely to be obvious. More generally, there is significant debate over the extent to which software patents are likely to foster (or hinder) innovation. Because software products are often “complex” and may infringe many patents, some incumbent providers of information technology (IT) products support the limiting of patentability. Perhaps most notably, the U.S. Court of Appeals for the Federal Circuit (arguably prompted by the recent questioning of patents on “abstract ideas” by several members of the Supreme Court) recently excluded processes from patentability (including software processes) that are not limited to a physical transformation or machine.

In contrast with software patents, university-owned patents have existed for more than a few decades. The number of university-held patents has increased substantially, however, since the 1980 passage of the Bayh-Dole Act. While the legal question was sometimes murky prior to 1980, Bayh-Dole made it unequivocally clear that universities can patent federally funded research.

Burk, DanLemley, MarkPolicy Levers in Patent Law 89 2003
Rai, Arti K.Engaging Facts and Policy, A Multi-Institutional Approach to Patent System Reform 103 2003
Merges, Robert P.Software and Patent Scope: A Report from the Middle Innings 85 2007
Lunney, GlynnE-Obviousness 7 2001
Bessen, JamesHunt, RobertAn Empirical Look at Software Patents 16 2007
Mann, RonaldDo Patents Facilitate Financing in the Software Industry 83 2005
Noel, MichaelSchankerman, MarkStrategic Patenting and Software Innovation 12 2006
Walsh, JohnWorking through the Patent Problem 299 2003
2006
2005
2004
Lemley, MarkAre Universities Patent Trolls? 18 2008
Noguchi, Yuki 2006
Azoulay, PierreMichigan, RyanSampat, Bhaven N.The Anatomy of Medical School Patenting 357 2007
Azoulay, PierreDing, WaverlyStuart, Toby E.The Determinants of Faculty Patenting Behavior: Demographics or Opportunities 63 2007
Murray, FionaStern, ScottDo Formal Intellectual Property Rights Hinder the Free Flow of Scientific Knowledge: An Empirical Test of the Anti-Commons Hypothesis 63 2007
Cohen, WesleyNelson, Richard R.Walsh, John P.Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not) 2 2000
DiMasi, Joseph A.The Price of Innovation: New Estimates of Drug Development Costs 22 2003
Bonaccorsi, AndreaRossi, CristinaWhy Open Source Software Can Succeed 32 2003
Lohr, Steve 2006
Agrawal, AjayHenderson, RebeccaPutting Patents in Context: Exploring Knowledge Transfer from MIT 48 44 2002
Menell, Peter S.An Analysis of the Scope of Copyright Protection for Application Programs 41 1989
King, John L.Patent Examination Procedures and Patent Quality 63 2003
Cockburn, Iain M.MacGarvie, Meghan J.Entry, Exit and Patenting in the Software Industry 12 2006
Graham, Stuart J. H.Mowery, David C. 2003
Graham, Stuart J. HMowery, David C. 2005
Hall, Bronwyn H.MacGarvie, MeghanThe Private Value of Software Patents 16 2006
Allison, John R.Lemley, MarkWho's Patenting What? An Empirical Exploration of Patent Prosecution 53 2000
Allison, JohnLemley, MarkThe Growing Complexity of the Patent System 82 2002
Allison, JohnTiller, EmersonThe Business Method Patent Myth 18 2003
Allison, John R.Valuable Patents 92 2004
Allison, John R.Software Patents, Incumbents, and Entry 85 2007
Allison, John R.Mann, Ronald J.The Disputed Quality of Software Patents 85 2007
Layne-Farrar, AnneDefining Software Patents: A Research Field Guide 1 2005
GNU General Public License 2007
Brown, C. Titus 2005
Benner, Jeffrey 2002
Telephone Interview with Steven Brenner 2004
Carnegie Mellon Universityhttp://www.sei 2009
Mowery, David C.Sampat, Bhaven N.Patenting and Licensing University Inventions: Lessons from the History of the Research Corporation 10 2001
Colyvas, JeannetteHow Do University Inventions Get into Practice 48 2002
Jensen, RichardThursby, MarieProofs and Prototypes for Sale: The Licensing of University Inventions 91 2001
Benkler, Yochai 2002
Rai, Arti K.Regulating Scientific Research: Intellectual Property Rights and the Norms of Science 94 1999
Lemley, MarkShapiro, CarlPatent Holdup and Royalty Stacking 85 2008 2007
Shane, ScottSomaya, DeepakThe Effects of Patent Litigation on University Licensing Efforts 63 2007
Somaya, DeepakStrategic Determinants of Decisions Not to Settle Patent Litigation 24 2008
Arora, AshishMerges, Robert P.Specialized Supply Firms, Property Rights, and Firm Boundaries 13 2004
Mann, Ronald J.Sager, Thomas W.Patents, Venture Capital, and Software Start-ups 36 2007
Ku, Katherine 2002
Jones, Patrick 2004