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Bill Aims to Protect Joint Patents

Measure Is Needed to Guard Collaborative Projects, Supporters Say

By Jonathan Krim
Washington Post Staff Writer
Tuesday, November 23, 2004; Page E05

Patents that result from collaboration between universities and companies won new protections from legal challenge under legislation that passed Congress over the weekend.

If signed by President Bush, the bill would defuse a federal court ruling that many researchers said jeopardized patents growing out of joint scientific research conducted by public and private institutions, especially in such relatively new fields as biotechnology.

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The bill passed Saturday as part of broader spending legislation.

At issue was a 1997 decision in California in a dispute between two makers of football-like toys equipped with tails and fins on one end of them.

In its decision, the court found that the inventor of the Vortex ball, a patent for which was held by OddzOn Products Inc., derived the invention with the help of research collaborators who shared confidential designs among each other.

In a challenge from a rival toymaker, the court found that the information shared by the inventors could be considered evidence that the invention was not original, and thus the patent could be revoked.

Essentially, the ruling meant that sharing of information among researchers, even confidentially, could lead to challenges to the validity of patents by parties who had nothing to do with the original patent.

"It was the sword of Damocles hanging over the heads of universities that engage more and more with other universities and companies," said Andrew Cohn, spokesman for the Wisconsin Alumni Research Foundation, which coordinates patents for University of Wisconsin at Madison.

The bill, which had broad, bipartisan support, changed U.S. patent law to eliminate the threat of such challenges.

"Today's biotech, pharmaceutical, and nanotechnology companies are among the foremost users of collaborative research strategies," Rep. Lamar S. Smith (R-Tex.), the bill's chief sponsor in the House, said in a statement.


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