Watch the Regents' Special Committee On Innovation Transfer and Entrepreneurship of 6-2-2023

The Regents' Special Committee on Innovation Transfer and Entrepreneurship met at Berkeley on June 2nd. As blog readers who have followed our coverage of this committee's past meetings will know, much of the meeting (including the public comments) is largely a show-and-tell promotional affair for the host campus and for UC more generally. The public comments this time were - as expected - promotional with one exception dealing with the People's Park affair. On the other hand, the committee did not get into the weeds on the administration of patent rights tracking as it has done in some prior meetings.

Beyond the promotional presentations, the most informative portion dealt with two patent rights matters that could affect UC. A Supreme Court case - Amgen v. Sanofi - involved the distinction between claiming a patent on an "entire genus" vs. a more specific detailed application. Amgen had a patent on a class of potential cholesterol-lowering drugs. Sanofi had a patent on a specific drug within that class. The Supreme Court rule against Amgen and for Sanofi, saying the Amgen claim was too general.

It was said that this ruling would endanger "foundational" patents and that such "genus" claims are found mainly in the biological sciences. In answer to a question as to whether the new ruling would on net be harmful or beneficial to UC, there was only an it-depends answer from the spokesperson for the general counsel. Nonetheless, it seems likely that UC patents are more likely to involve basic research and thus more likely to be of the foundational type. It may be that the general counsel representatives did not want to provide a more specific answer, i.e., that it might well be harmful to say UC may be adversely affected, due to fears that what they said might - in the future - be used against the university in some patent litigation.

A second issue dealt with a change in U.S. Dept. of Energy (DOE) policy regarding patent rights starting in 2021. Federal law allows private ownership of patents that come from federally-sponsored research with limited exceptions. The DOE change involved a requirement that items manufactured under such patents be manufactured in the U.S. There are exceptions if it can be shown that such U.S. production would not be commercially feasible. Under the new rule, the patent holder - e.g., UC - would be responsible for actual monitoring to ensure U.S. manufacturing was occurring. Up to now, all UC had to do was insert a clause in its licenses saying the licensee had to manufacture in the U.S. Monitoring by UC to ensure the licensee was complying was not required.

There was discussion of whether other federal agencies will follow the lead of DOE and require similar monitoring by UC. Universities have apparently been able to prevent the spread of the requirement to other agencies. But doubt was expressed that the other federal won't follow DOE's lead eventually. There was a question of whether there could be a lawsuit challenging DOE's policy change. General Counsel Robinson said he did not want to discuss that issue in open session.

The committee then went into closed session. What Robinson and others may have said in the closed session about the monitoring issue, or even if he said anything about it, is of course not known.

We continue to preserve recordings of Regents meetings since the Regents do not have any explicit policy as to retention.

You can watch the entire session at:

https://archive.org/details/regents-special-committee-on-innovation-transfer-and-entrepreneurship.