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145 Universities Warn Congress Pending Patent Legislation Would Harm U.S. Innovation System

The Honorable Chuck Grassley
Committee on the JudiciaryUnited States Senate
Washington, DC 20510

The Honorable Bob Goodlatte
Committee on the Judiciary
U.S. House of Representatives
Washington, DC 20515

The Honorable Patrick Leahy
Ranking Member
Committee on the Judiciary
United States Senate
Washington, DC 20510

The Honorable John Conyers
Ranking Member
Committee on the Judiciary
U.S. House of Representatives
Washington, DC 20515

February 24, 2015

Dear Chairman Grassley, Ranking Member Leahy, Chairman Goodlatte and Ranking Member Conyers:

As Congress considers legislation related to the U.S. patent system, American universities and associated technology transfer foundations and organizations stand ready to work with you to address the patent litigation abuses we all agree are a problem. We are deeply concerned, however, that much of the patent legislation currently being discussed in Congress, including the Innovation Act, H.R. 9, goes well beyond what is needed to address the bad actions of a small number of patent holders, and would instead make it more difficult and expensive for patent holders to defend their rights in good faith.

Two such proposals – mandatory fee-shifting and involuntary joinder – are especially troubling to the university community because they would make the legitimate defense of patent rights excessively risky and thus weaken the university technology transfer process, which is an essential part of our country’s innovation and entrepreneurial ecosystem.

The continuing success of university technology transfer depends on a robust patent system that provides strong protection for inventions, enabling universities to license these patented inventions to private sector enterprises to create socially beneficial products and services. U.S. universities, along with related nonprofit research institutions, conduct over half of the basic research in the United States, approximately 60 percent of which is federally funded. The Bayh-Dole Act of 1980 allows universities to license the resulting patents to the private sector for commercialization. University technology transfer provides a rich return on both public and private funding for basic research in the form of countless innovative products and services that today benefit the public, create jobs, and contribute to U.S. economic competitiveness and global technological leadership.

The CAT scan and MRI, FluMist and many other commonly used vaccines, GPS, bar codes, Doppler radar, web browsers and the Internet itself are just a few of the best-known university innovations. In 2013, U.S. universities were issued more than 5,200 patents, and research performed at universities led to the formation of 818 new start-up companies. More than three-quarters of these new start-up companies had their primary place of business in the licensing institution’s home state.

The fee-shifting proposals would require courts to award attorneys’ fees and costs to the winning party in patent cases, with a possible waiver of fee-shifting based on vague, subjective criteria. The prospect of substantially increased financial risk would discourage universities and other patent holders lacking extensive litigation resources from legitimately defending their patents. Moreover, this increased risk would deter potential licensees and venture capitalists from investing in university patents in the first instance, reducing the number of research discoveries that advance to the marketplace. The impact of fee-shifting would be magnified by proposed provisions calling for involuntary joinder, which could force universities and inventors into paying damages for actions of third parties over which they had no control. In some cases, such damage awards could devastate technology transfer operations.

We hope that, as you assess potential changes to patent law, you will take into consideration a number of recent judicial and administrative actions. These actions include Supreme Court decisions that expanded judges’ discretionary power to shift costs when a party has filed a frivolous lawsuit or otherwise behaved badly; the Judicial Conference’s proposed changes to the Federal Rules of Civil Procedure that would ensure that patent cases are bound by the same rigorous pleading and discovery standards required of all other federal cases; and the implementation of the America Invents Act’s new Inter Partes Review and Post Grant Review proceedings, which are contributing to a significant reduction in patent litigation.

As Congress renews its efforts to enact patent litigation reforms, we believe it is imperative that any legislation avoid sweeping changes that would weaken our overall patent system and hinder the flow of groundbreaking advances from university research to the private sector, which catalyzes economic growth, creates jobs, and improves the lives of all Americans. We look forward to working with you and your staffs to ensure that any legislative changes are targeted, measured, and carefully calibrated to safeguard this nation’s global leadership in innovation.

We know you take these issues seriously and appreciate your genuine interest in addressing patent litigation abuses.


Arizona State University

Auburn University

Binghamton University, SUNY

Boise State University

Boston University

Brandeis University

Brown University

California Institute of Technology

Carnegie Mellon University

Case Western Reserve University

The City University of New York

Clemson University

Colorado School of Mines

Colorado State University

Cornell University

Duke University

Emory University

Florida State University

Georgia Institute of Technology

Georgia Regents University

Georgia State University

Idaho State University

Illinois State University

Indiana University

Iowa State University

The Johns Hopkins University

Kansas State University

Kent State University

Louisiana State University

Louisiana Tech University

Massachusetts Institute of Technology

Miami University

Michigan State University

Michigan Technological University

Mississippi State University

Montana State University

New Mexico State University

New Mexico Tech

New York University

North Carolina Agricultural and Technical State University

North Dakota State University

Northeastern University

Northern Arizona University

Northern Illinois University

Northwestern University

Oakland University

The Ohio State University

Ohio University

Oklahoma State University

Oregon State University

Pace University

The Pennsylvania State University

Portland State University

Purdue University

Rensselaer Polytechnic Institute

Rutgers, The State University of New Jersey

San Diego State University

South Dakota State University

Southern University and A&M College

The State University of New York System (SUNY)

Stony Brook University, SUNY

Temple University

Texas State University

Texas Tech University

Tulane University

The University of Alabama

The University of Alabama in Huntsville

University at Albany, SUNY

University at Buffalo, SUNY

University of North Carolina at Chapel Hill

University of Akron Research Foundation

University of Alabama at Birmingham

University of Alaska

University of Alaska Anchorage

University of Alaska System

University of Arizona

University of Arkansas

University of Central Florida

The University of Chicago

University of Cincinnati

University of Colorado - Anschutz Medical Campus

University of Colorado Boulder

University of Colorado System

University of Connecticut

University of Delaware

University of Florida

University of Georgia

University of Hawaii

University of Houston

University of Idaho

University of Illinois

University of Illinois at Chicago

University of Illinois at Urbana-Champaign

University of Iowa

University of Kansas

University of Kentucky

University of Louisiana at Lafayette

University of Louisville

University of Maine

University of Maryland at College Park

University of Maryland, Baltimore County

University of Massachusetts

University of Massachusetts Boston

University of Massachusetts Lowell

University of Michigan

University of Minnesota, Twin Cities

University of Missouri in Columbia

University of Missouri System

University of Montana

University of Nebraska

University of Nevada, Reno

University of New Hampshire

University of New Mexico

University of New Orleans

University of North Carolina at Wilmington

University of North Carolina System

University of North Dakota

University of Notre Dame

The University of Oklahoma

University of Oregon

University of Pennsylvania

University of Pittsburgh

University of Rhode Island

University of Rochester

University of South Alabama

University of South Carolina

University of South Florida

University of Southern California

The University of Southern Mississippi

The University of Tennessee, Knoxville

The University of Texas at Austin

The University of Toledo

University of Virginia

University of Washington

The University of Wisconsin-Madison

University of Wyoming

Utah State University

Virginia Commonwealth University

Washington State University

Washington University in St. Louis

Wayne State University

West Virginia University

Western Michigan University

Yale University


CC: Members of the United States Senate and United States House of Representatives