Bibliography: Mark A. Lemley, Are Universities Patent Trolls? 18 Fordham Intellectual Property, Media & Entertainment Law Journal 611 (Spring 2008) / Stanford Public Law Working Paper, No. 980776 (2007).
The confluence of two significant developments in modern patent practice leads me to write a paper with such a provocative title. The first development is the rise of hold-up as a primary component of patent litigation and patent licensing. The second development in the last three decades is the massive surge in university patenting. At the confluence of these developments is a growing frustration on the part of industry with the role of universities as patent owners. Time and again, when I talk to people in a variety of industries, their view is that universities are the new patent trolls.
In this paper, I argue that Universities should take a broader view of their role in technology transfer. University technology transfer ought to have as its goal maximizing the social impact of technology, not merely maximizing the university's licensing revenue. Sometimes those goals will coincide with the university's short-term financial interests. Sometimes universities will maximize the impact of an invention on society by granting exclusive licenses for substantial revenue to a company that will take the invention and commercialize it. Sometimes, but not always. At other times a non-exclusive license, particularly on a basic enabling technology, will ultimately maximize the invention's impact on society by allowing a large number of people to commercialize in different areas, to try out different things and see if they work, and the like. University policies might be made more nuanced than simply a choice between exclusive and nonexclusive licenses. For example, they might grant field-specific exclusivity, or exclusivity only for a limited term, or exclusivity only for commercial sales while exempting research, and they might condition continued exclusivity on achievement of certain dissemination goals. Finally, particularly in the software context, there are many circumstances in which the social impact of technology transfer is maximized either by the university not patenting at all or by granting licenses to those patents on a royalty-free basis to all comers.
Finally, I think we can learn something about the raging debate over who's a patent troll and what to do about trolls by looking at university patents. Universities are non-practicing entities. They share some characteristics with trolls, at least if the term is broadly defined, but they are not trolls. Asking what distinguishes universities from trolls can actually help us figure out what concerns us about trolls. What we ought to do is abandon the search for a group of individual companies to define as trolls. In my view, troll is as troll does. Universities will sometimes be bad actors. Nonmanufacturing patent owners will sometimes be bad actors. Manufacturing patent owners will sometimes be bad actors. Instead of singling out bad actors, we should focus on the bad acts and the laws that make them possible.