Subject: National Academies Research on Intellectual Property Issues
NINCH-ANNOUNCE (david@ninch.org)
Date: Tue, 17 Oct 2000 12:15:53 -0400
Message-Id: <v04210149b6122a5b4cab@[192.100.21.22]> Date: Tue, 17 Oct 2000 12:15:53 -0400 To: ninch-announce@cni.org, bb-all@ninch.org From: NINCH-ANNOUNCE <david@ninch.org> Subject: National Academies Research on Intellectual Property Issues
NINCH ANNOUNCEMENT
News on Networking Cultural Heritage Resources
from across the Community
October 17, 2000
National Academies Research on Intellectual Property Issues
http://www.nationalacademies.org/ipr
Although much of the following applies more to patents than to
copyright, readers might be interested in these research areas
commissioned by the Board on Science, Technology and Economic Policy
(STEP) of the National Academies. The results of this research will
be presented in a conference organized by the Committee on
Intellectual Property Rights in the Knowledge-based Economy in early
Fall 2001.
The broad areas of research are as follows:
PATENT ADMINISTRATION AND LITIGATION
SOFTWARE AND BUSINESS METHOD PATENTS
BIOTECHNOLOGY
RELATED RESEARCH ACTIVITIES
David Green
===========
>Date: Mon, 16 Oct 2000 07:48:54 -0700
>From: Clifford Lynch <cliff@cni.org>
>To: Multiple recipients of list <cni-announce@cni.org>
>Subject: National Academies Research on Intellectual Property Issues
>
>The following announcement describes some of the work that the
>National Academies is sponsoring on intellectual property issues.
>
>Clifford Lynch
>Director, CNI
>=============
The National Academies
Board on Science, Technology and Economic Policy (STEP)
As part of its examination of intellectual property rights, the National
Academies STEP Board is pleased to announce the results of its March 23, 2000
request for proposals. It is expected that this research will help inform the
deliberations of the Committee on Intellectual Property Rights in the
Knowledge-based Economy over the coming months, and that final reports of this
research will be presented and discussed at a public conference in early Fall
2001. The following activities were chosen to receive full or partial support
by the STEP Board. In addition to the commissioned work, the Committee will
have access to results of work being supported by other sponsors or provided on
a primarily pro bono basis. The researchers and project descriptions are both
pasted below this message and attached as a .pdf file. We are grateful for the
support of the Andrew W. Mellon Foundation and the National Aeronautics and
Space Administration, who are helping support this initial research endeavor.
For further information on this research activity, please visit
www.nationalacademies.org/ipr, or contact:
Craig Schultz
Research Associate
STEP Board
cschultz@nas.edu
202.334.2200
www.nationalacademies.org/ipr
PATENT ADMINISTRATION AND LITIGATION
1. Patent Examiner Productivity and Quality
In the absence of a solid understanding of the process of
assigning patent
rights, it is difficult to assess the likely effect of changes to
the PTO in
terms of management and personnel practices, financial resources, and
information sources, etc. Through a series of structured
interviews with PTO
managers, current and former patent examiners, private patent
attorneys, and
inventors, followed by an analysis of a sample of recent granted
patents, the
research team will analyze the relationship between patent examiner
characteristics (such as tenure, educational background and degree of
specialization) to patent productivity and quality (such as time
to approval,
citation rate, litigation outcomes, etc.). The interviews and the
analysis will
take into account the fact that examination is conditioned not only
by law and
factors within the PTO but also by the structure of applications and
interaction
with attorneys.
Scott Stern, MIT Sloan School
Sam Kortum, Boston University
Iain Cockburn, Boston University
2. Effects of Patent Oppositions: A Comparison of U.S. and European Patent
Histories
An important institutional difference between the U.S. and
European patent
systems is the European opposition process whereby interested
parties can
contest the validity of an issued patent for a period after its
issuance. The
U.S. reexamination procedure is more circumscribed and much less
frequently
used. Opportunity for opposition has been cited as an efficient
and effective
means to improve patent quality, especially in novel technological
areas, and to
reduce costly litigation; but the effects of the procedure have not
been studied
empirically. The research team will assemble experimental and
control samples
of identical USPTO and EPO patents and determine what conclusions
can be drawn
about the parties to and effects of opposition on patent examination
and quality
and subsequent litigation.
Dietmar Harhoff, University of Munich
Bronwyn Hall, U.C. Berkeley
David Mowery, U.C. Berkeley Haas School of Business
3. Enforcing IPRs: the Incidence and Outcomes of Patent Suits
Patent litigation is on the rise and the costs of patent suits can be
substantial, but we do not know the extent to which those costs
reduce the value
of patents vis-
à-vis other means of protecting IP and the incentives for firms
of different types to invest in research and development. Using a
database on
patent suits, a research team will investigate how the frequency and
probability
of suits and their outcomes (settlement rates and win or loss rates
in trials)
vary across patents, technology fields, and patent owners with different
characteristics.
Jean Lanjouw, Yale University and the Brookings Institution
Mark Schankerman, London School of Economics
4. Cooperation and Conflict Over Patent Rights in Cumulative Technologies
This study investigates the breakdown of private bargaining over
patent rights
in one industrial context, semiconductors, involving cumulative
technological
development. Previous research has shown that semiconductor
firms ramped up
their patent portfolios during the 1980s in part to improve their
abilities to
negotiate with external owners of IP and to deter patent-related
suits. Yet the
number of semiconductor-related patent suits filed in U.S. federal
courts has
risen steadily over this period. This study tracks the patent
litigation
histories of a sample of 97 U.S. semiconductor firms between 1995
and 1998 to
address two main questions: 1) what types of technologies (e.g.,
process or
product) and entities are involved in these disputes? and 2) how,
if at all,
have the characteristics of these disputes changed during the period
associated
with stronger U.S. patent rights?
Rosemarie Ham Ziedonis, Wharton School, University of Pennsylvania
SOFTWARE AND BUSINESS METHOD PATENTS
1. Software Copyrights and Patent Rights: The Causes and Consequences of
Regime Change in IP Protection
Although software patenting has accelerated, it is not clear
which types of
firms with respect to what types of products have shifted from one
form of IP
protection to the other or supplemented one with the other and why. Nor is it
known whether the greater propensity to patent is associated
with increased
licensing of computer program components or is largely defensive
in nature.
Whatever the trends, what are their implications for the future of
the computer
software industry? The investigator will relate data on software
patents with
copyright registrations identifiable by firm to shed light on these questions.
D. Mowery, U.C. Berkeley Haas School of Business
2. Internet-Related Business Method Patents
Although the USPTO has been issuing patents relating to
business methods
embodied in software for several years, the numbers were
small and their
significance largely unnoticed until the growth of the Internet
and the 1998
Federal Circuit Court of Appeals decision in the State Street
Bank case. To
assess the causes of the acceleration of patenting and its
implications for
financial services, electronic commerce, and other services, there is
a need for
baseline data on patent holders, examination characteristics, patent
references
and scope, and litigation trends. The research team will develop a
profile of
Internet-related business method patents that will be useful to a
variety of
further research projects as well as policy discussions. A
careful effort to
develop intelligible definitions of related terms (i.e.,
software, Internet,
business methods, e-commerce, etc.) and relate them to USPTO
classifications
will accompany this analysis.
John R. Allison, Graduate School of Business, University of Texas at Austin.
Emerson H. Tiller, University of Texas at Austin
BIOTECHNOLOGY
1. Intellectual Property Licensing in Pharmaceuticals and Biotechnology
As a result of changes in policy (the Bayh-Dole Act allowing
publicly funded
research institutions to acquire and dispose patent rights on their
inventions),
technology (molecular biology and DNA sequencing), and participants
(the rise of
university participation in commercial activity and growth of small
biotechnology companies, including ones marketing genomic
information), there is
concern how the acquisition and use of patents is affecting the
conduct and
communication of fundamental research and innovation. In
particular, there is
concern that the strengthening and proliferation if patent rights
to upstream
products and processes are making it more difficult for 1) research
scientists
to communicate methods and results, collaborate, and share
research materials
and 2) downstream product developers to commercialize new products. Through a
series of structured interviews with representatives of all parties, the
research team will ascertain what the trends and patterns are and
especially
whether reasonable arrangements for licensing IP are evolving.
Wesley Cohen, Carnegie Mellon University
Ashish Arora, Carnegie Mellon University
John Walsh, University of Illinois at Chicago.
RELATED RESEARCH ACTIVITIES
In addition to the above commissioned work the STEP Committee on
Intellectual
Property in the Knowledge-Based Economy will have access to
results of work
being supported by other sponsors or provided on a primarily pro bono basis:
1. Patent Examination, Patentability, and Patent Reform
Analytical papers addressing three inter-related topics: 1) How should "prior
art" be defined given the development and future predominance of "information
age" sources for memorializing and accessing prior art technology and the needs
and capabilities of patent offices to access prior art examining
inventions for
patentability. A case study will consider the issues related to the definition
of and access to prior art in computer software and so-called "business method"
technology. 2) How should the patent system be limited or bounded in areas
where public policy issues or concerns become manifest. A case study will
consider the issue of limits on patent eligibility for genomics and business
method inventions. 3) How should the patent system operate in the
21st Century,
focusing on proposed reforms for increasing the efficiency and
quality of patent
examination and reducing the incidence and cost of disputes over patents.
Fellows of the American Intellectual Property Law Association
Robert Armitage, Lilly Research Laboratories
Michael Kirk, American Intellectual Property Law Association
2. The Role of Intellectual Property in Financial Services
An analytical paper on how intellectual property rights have
affected the
development of financial services and what role they may play in the future.
Robert Hunt, Research Department, Federal Reserve Bank of Philadelphia
3. Patent Examination Procedures
An empirical analysis of the relationship between the
administration of patent
examination at the PTO unit level and litigation of patent validity.
John L. King, Economic Research Service, U.S. Department of Agriculture
4. Opportunity Costs of Litigation
A survey component to ascertain the costs other than attorney
fees and court
costs entailed in litigation. These include costs associated with
the time and
attention that firms' high-level managerial and technical personnel
must devote
to avoiding, defending against, and supporting the prosecution of patent suits.
W. Cohen and A. Arora, Carnegie Mellon University
J. Walsh, University of Illinois at Chicago
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