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Newly formed UTLP aims to streamline tech licensing by pooling patents

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Fifteen leading research universities have come together to create a licensing pool that they hope will encourage innovation by making intellectual property more available to potential licensees and streamlining the tech transfer process for the schools.

The University Technology Licensing Program (UTLP) includes Brown, Caltech, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, the University of Southern California, and Yale.

Focused on the physical sciences, UTLP pools intellectual property assets from the universities with the intent of making licensing more efficient, says Orin Herskowitz, executive director of Columbia Technology Ventures at Columbia University in New York City.

Tech companies will benefit from being able to obtain licenses to inventions from multiple universities in a streamlined way through UTLP, he says. The pool provides a “one-stop shopping” experience for companies, Herskowitz says, which should result in more voluntary patent licensing and accelerate the pace of innovation.

UTLP has intellectual property in three main pools: connectivity (power management, networking protocols, signal processing and codecs, location tracking, cameras and image processing, autonomous vehicles, and data applications (storage, data management, network protocols).

Each UTLP university determines which of its patents to contribute to the pool. The universities all retain ownership of their patents but license them to UTLP. A board of university members is authorized to issue non-exclusive licenses for the patents, including some bundles.

Slashing transaction costs

The effort to create UTLP began about six years ago, but the basic idea has been around much longer, Herskowitz says. There are certain fields in university licensing where patent licenses work quite well, he says, because the interface between industry and university licensing is efficient.

Biopharma, medical devices, clean energy, and advanced materials are fields where industry counterparts eagerly look forward to working with universities. They scout available patents often, he says.

“The challenge has been that in certain fields, like software and high tech, the dynamics are quite different. The reason is that unlike biopharma, software innovations might actually have hundreds of patents that are relevant and necessary for the company’s product or service,” Herskowitz says. “So when a university has a good innovation to offer a large tech company, that company increasingly over the past 10 years has been saying that if they take this patent then they will still have to go license patents from another 50 universities. The transaction costs can get quite high in that situation because of all the individual negotiations, so companies may often decide not to take a license at all, which is a clearly a toxic outcome.”

UTLP is designed to overcome that problem by allowing the licensee to address many patent licenses with one negotiation instead of going to the schools individually, he explains.

With one license, a company can get access to all of the patents in a particular pool, or just the ones of interest, Herskowitz says.

“We’re trying to respond to what we’ve heard in the past five or 10 years, that they want to do the right thing and license the patents but it’s too hard for them to obtain individual licenses at each university,” he says. “What we’ve done here is to remove that barrier. We want to make this process more attractive to industry.”

DOJ approves patent pool

A key development in creating UTLP was the receipt of a favorable business review letter from the U.S. Department of Justice. The letter also outlines some of the mechanics of UTLP that DOJ says makes it beneficial and safe from antitrust concerns. (For more information on the business review letter, see the story below.)

The universities requested the DOJ review, not an uncommon step in the formation of such pools, says Marc De Leeuw, JD, partner with the law firm of Sullivan & Cromwell in New York City, which represents UTLP. The UTLP request was a bit different, however, because most of the licensing pool arrangements reviewed by DOJ in the past involved standard essential patent pools.

“This is a pooling arrangement that does not revolve around any particular standard. It involves varied patents from the universities,” De Leeuw says. “We needed to discuss that with DOJ, and ultimately they recognized that this was different from pools they had reviewed in the past but there were appropriate competitive reasons for approving this.”

Part of the development process focused on determining what technology fields to include in the pools, says Dustin F. Guzior, JD, also with Sullivan & Cromwell.

“When you’re dealing with 15 of the best schools in the country, you have a scope problem because each one is working in so many areas, and then when you put it all together you quickly get an Excel file that will crash your computer,” he says. “The question for us was how to take what is available and determine where we have sufficient overlap to put together a portfolio that would make sense.”

The team started by looking at principal investigators at each of the schools and their primary areas of research interest. That showed overlap among the schools, which led to the creation of the three different portfolios — connectivity, autonomous vehicles, and data applications, Guzior says.

Future expansion possible

Herskowitz says he hopes UTLP ushers in a new era of better collaboration between universities and industry. The pool should improve voluntary patent licensing so that inventors get their due, and companies can fully license necessary patents with a much lower burden of transaction costs, he says.

UTLP is just getting started, but Herskowitz says if it goes well the pool will likely be expanded to other universities and other technology areas. UTLP has already been contacted by many universities asking to join the pool, he says.

Even with future expansion, the pool likely will remain tech focused because other licensing areas do not encounter the same difficulties that UTLP is designed to address, he says. In the future, UTLP may develop additional patent pools related to semiconductor fabrication, applied electronics, batteries, photovoltaics, robotics, and other areas.

Contact Herskowitz at oh2120@columbia.edu; De Leeuw at 212-558-4219 or deleeuwm@sullcrom.com; and Guzior at 212-558-4000 or guziord@sullcrom.com.

 


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