intellectual property licensing

Intellectual Property Antitrust Guidelines

Department of Justice DOJ and Federal Trade Commission FTC logos side by side illustrating the partnership between the two agencies

DOJ and FTC partnership to provide antitrust guidelines for intellectual property licensing

This research is about the intellectual property antitrust guidelines by the Department of Justice and the Federal Trade Commission in 1995.The guidelines addressed the licensing of intellectual property rights without violating antitrust laws. Designed to provide clarity, these guidelines instead bred confusion. They misunderstood the nature of intellectual property markets and provide insufficient guidance in the most difficult areas. Section I of this article discusses the basic provisions of the guidelines, especially their treatment of “innovation markets”.

Problem areas

Arguably, government enforcers should focus primarily on activity that creates entry barriers. Understanding the use and misuse of licensing is the key to analyzing barriers in the IP field. This article examines three common types of license misuse. Patent holders’ potential liability for refusing to grant licenses to competitors is considered in Section II. The effect of setting industry standards and at patent holders’ misconduct during industry standard setting is discussed in Section III. Section III analyzes patent accumulation through devices such as pooling and cross-licensing. The article concludes that the government should further amend the Guidelines to provide clearer rules for use of IP licenses.

Innovation markets

Certainly, innovation is encouraged and is necessary for the economic growth of nations. The obvious solution to defining innovation markets is simply to define relevant innovations. There is a need to define innovation markets in terms of the traditional goods and services markets associated with the licensed innovations. Moreover, agency focus should not be on creating a new market definition for innovations. We should associate innovations with the traditional market for the end-product line and location. These are the first two basic considerations of the relevant market definition.

Summary

Notably, licensing is a key phase of market entry for the development of innovative products and services (See U.S. Dep’t of Justice and Fed. Trade Comm’n, HORIZONTAL MERGER GUIDELINES, 1992 § 3.1, reprinted in 4 TRADE REG. REP. (CCH) ¶ 13, 104). Thus, agency guidance should focus on conduct in the high-tech arena that constitutes a potential entry barrier. Key high-tech entry barriers include refusals to license, misconduct during standards-setting activities, and patent accumulation methods. Patent accumulation methods include cross-Iicensing, package licensing, and patent pools. In short, these activities merit closer attention and practitioners need better guidance from the Agencies.

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Update: New 2017 intellectual property antitrust guidelines

University Technology Transfer conflicts Love and Hate

Introduction

love and hate as options in a checklist with love chosen by a gentleman

University technology transfer conflicts stem from job insecurity

This research examines university technology transfer conflicts related to the love and hate between research faculty and technology transfer staff. We attempt to provide greater understanding of how research faculty’s personal values and research universities’ organization values may differ and why. Faculty researchers and tech transfer office (TTO) staff are perceived to be virtuous agents. When both are meeting each other’s needs, a “love” relationship exists. However, when these needs are not met, a “hate” relationship exists that is replete with doubt and uncertainty. Thus, this doubt and uncertainty create tension and subsequent conflicts.

Ethical concerns

There are many accounts where faculty researchers have not followed university policies and expectations. They often violate policy and ethical standards. Likewise, faculty report numerous examples of how TTO staff members’ negligence in servicing their attempts to be good institutional citizens have failed them. Thus, this paper explores this love/hate relationship and reveals numerous conflicts that call into question ethical concerns.

Conflict Management

This article provides a set of recommendations for reducing and potentially alleviating university technology transfer conflicts. Results from a thorough review of the literature on the relationship between faculty and university TTOs reveals that perceived job insecurity is underway. Some research faculty members as well as some TTO staff, unethically violate their university policies. Violations include faculty not disclosing inventions disclosures and the staff selection to not provide full services. There are ways to alleviate the conflict between faculty’s personal values regarding their inventions and university’s organizational values. There is a need to enact measures that build trust and reduce insecurity. We not only examine this faculty/TTO staff ethical conflicts, but we offer a set of recommendations. In summary, we believe these recommendations will reduce the likelihood of unethical behavior. They encourage greater institutional commitment and trust.

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Technology transfer toolkit for HBCUs

HBCU technology transfer history

University technology transfer toolkit to help emerging research institutions such as HBCUs

A technology transfer toolkit for Historically black college and universities HBCUs was proposed in my PhD dissertation. Unfortunately, under-resourced HBCU administrators complain and experience a decline in financial support from government sources (Jones, 2013). This is a serious, pressing problem that needs closer attention. In fact, some experts have argued that HBCUs are no longer relevant and should close their doors (John M. Lee Jr., 2013). Founders established HBCUs to address unequal access to education (Lorenzo L. Esters, 2013; Nia Imani Cantey, 2013). Per the Carnegie classifications of universities, few of the HBCUs are research oriented (The Carnegie Classification of Institutions of Higher Education, 2016). Thus, few HBCUs are engaged in technology licensing for revenue generation. They have not adapted to the need for change toward being more financially self-reliant (M. G. Williams, 2010).

Research method

I conducted a mixed method study of the development of an university technology transfer toolkit that HBCUs can use to become more self-reliant financially. Historically under-served HBCUs lag behind their peer non-HBCUs. Largely, they originated as teaching and blue-collar trade schools. Increased involvement in these research-oriented activities will likely enable HBCUs to grow into new or stronger research institutions. A comprehensive literature review of university technology transfer reveals non-HBCUs’ technology transfer problem areas. Addressing these issues will assist HBCUs as well.

Proposed toolkit

Notably, the problem areas for non-HBCUs would be challenging for HBCUs as well. Thus, the non-HBCUs tech transfer challenges are likely to be part of the reason that HBCUs are not taking advantage of tech commercialization. The proposed tool kit includes tools that will likely alleviate the problem areas. This would increase HBCU involvement in university technology transfer, industry partnerships, and tech-led business ventures. Faculty engagement in tech transfer requires Informal communication networks (D. Wright, 2013).

Further, dvanced planning information technology tools aid in advancing informal knowledge sharing networks which increase faculty engagement in tech transfer. They can improve decision making and perceived university tech commercialization service competencies and performance. Thus, with respect to advancing the participation of HBCUs in university tech commercialization, the research problems presented include:

Given that the problems that non-HBCUs face with university technology transfer will likely equally or more challenging for HBCUs, what are the problem areas with non-HBCUs’ university technology transfer?
What theoretical framework for research aids in the development of advanced planning system tools to help HBCUs with technology transfer?
What advanced planning system tools can diminish the university technology transfer problems?

supply chain management illustrated with images

University technology transfer is a supply chain network

In conclusion, I proposed that university technology transfer should be approached from the novel view that it is a supply chain network! Further, the social comparison theory, resource based view and paradigms shifting in combination form the theoretical framework for testing this proposition.

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