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Universities Form Joint Engineering Patent Pool

U.S. Patent and Trademark Office

U.S. Patent and Trademark Office (A. Kotok)

15 Jan. 2021. A group of 15 American universities are putting part of their engineering patents into a common licensing pool for commercial development. The University Technology Licensing Program aims to provide an easier way for companies to license technologies in the physical sciences created at these university labs, beginning with patents on connectivity, autonomous vehicles, and data applications.

Participants in the University Technology Licensing Program, or UTLP, are Brown University, California Institute of Technology, Columbia University, Cornell University, Harvard University, University of Illinois, University of Michigan, Northwestern University, University of Pennsylvania, Princeton University, State University of New York at Binghamton, University of California in Berkeley, University of California in Los Angeles, University of Southern California, and Yale University.

The program seeks to provide licensing prospects in industry an easier way to find and acquire the rights to technologies developed in university physical science and engineering labs. “UTLP is a creative solution to meet a long-felt need for universities and private sector actors,” says David Kappos, former director of the U.S. Patent and Trademark Office in a UTLP statement. “It will make the licensing of technologies much easier and more convenient, to the benefit of all participants.”

The first technologies contributed by UTLP participants are in three areas:

– Connectivity, including power management, networking protocols, signal processing, data stream coders and decoders, location tracking, cameras, and image processing

– Data applications, covering storage, data management, and network protocols

– Autonomous vehicles

Participating institutions reviewed their portfolios and contributed their patents in these fields. The program may expand to include patents on other engineering and physical science technologies such as semiconductor fabrication, applied electronics, batteries, photovoltaics, and robotics.

UTLP is expected to offer companies a range of licensing alternatives, such as acquiring rights to an entire technology portfolio, more limited collections of related technologies, or individual patents. Licensing fees, says UTLP, are determined by market value and feedback, but start-up companies will be eligible for substantial discounts.

Favorable antitrust review

UTLP says the program received a favorable antitrust evaluation from the U.S. Department of Justice. In a 13 January letter to the law firm Sullivan & Cromwell, counsel to UTLP, acting principal deputy attorney-general Michael Murray notes …

Taking into account this significant benefit to UTLP’s potential licensors, sublicensees, and the public, and considering the technologies at issue, UTLP’s current scale and scope, the efficiencies associated with the program, and potential harms, the Department concludes that UTLP is unlikely to harm competition.

Murray adds in a separate Department of Justice statement that in the physical sciences, “some university research may never be commercialized due to the costs associated with negotiating multiple licenses and combining the complementary university patents that may be necessary for cutting-edge implementations.  To the extent that UTLP makes it easier for universities to commercialize inventions that may be currently unlicensed and under-utilized, industry participants, university researchers, and ultimately the public can benefit.”

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