Professor Rai began her discussion by defining the term “platform”: a platform is a technology that can be widely developed and applied in various technological settings. Researchers do not often know which technologies will become platforms, or what new technologies will replace current platforms. Because platform technologies are the foundation of further research, it is essential that property rights over these platform technologies are granted in a way that benefits both the developer and society at large. “If the allocation of property rights is not done properly,” Professor Rai explained, “the platform is not developed and commercialized in the most efficient way possible.”
As research organizations, universities play a unique role in the development of platform technologies. The Bayh-Doyle Act of 1980 gives universities the right to seek patents for inventions developed using federally-funded research. As a result, many platform technology patents are held by universities.
As Professor Rai explained, many rights in platform technology end up being divided between the parties, because no party has a “winner take all” role in the development of the technology. However, this is not always the case. The first key patent for a bio-technology platform, the Cohen-Bayer patent, was held by Stanford University. Even though the patent had a broad scope (the breadth of the invention an inventor is entitled to) and Stanford was the sole patent holder, the technology was still efficiently developed and commercialized thanks to Stanford’s licensing system. This system, considered by Rai to be the gold standard in licensing, required only a modest licensing fee and did not exclusively license the technology to one company, thereby allowing the technology to be effectively commercialized by numerous biotech companies. Despite the fact that, in this case, a broad patent was able to be effectively commercialized, Professor Rai's view is that a broad patent scope for platform technologies is neither an efficient use of the patent system nor socially beneficial.
Professor Rai pointed to the CRISPR-Cas9 case as an example of the importance of the scope of patent rights. The CRISPR-Cas9 technology—a DNA editing system—has become an important platform technology. In early 2012, the University of California filed a patent application for the technology. However, in late 2012, the Broad Institute filed a patent application for a different aspect of CRISPR-Cas9.
The Patent Trial and Appeal Board (PTAB) analyzed the dispute by asking whether the University of California had actually done the work to invent what they were claiming. The PTAB found that the Broad Institute’s claimed invention was sufficiently distinct from the University of California’s, avoiding the claim of interference for now. In Rai's view, because the PTAB interpreted the patents’ scope narrowly, licenses to the CRISPR-Cas9 technology will not result in a winner-take-all situation.
Kelli Golinghorst, a 2L, was intrigued by the presentation: “I don’t have an IP background, but I thought Professor Rai did an excellent job of making sure the IP concepts were understandable and approachable.” Golinghorst also appreciated the presence of non-law students in the room. “It’s important for people to understand the law,” Golinghorst explained, “but it’s also important for lawyers to understand where non-lawyers are coming from, because those are the people who will be our clients.”
Amanda Marincic -- April 28, 2017