The pressure to extract rents from academic research results has led many universities to file more patents and to rely on a growing range of monetization strategies including selling patents to Patent Assertion Entities (PAEs). We build a database of university patents granted by the USPTO and, for each of them, we collect information about the change of ownership. A first analysis of these data shows that about 12% of university patents have been transferred at least once (including reassignments to universities, hospitals, public research centres and governmental institutions) and only a minor part has been acquired by PAEs (the 0.3% of university patents). However, we also find that most transfers of university patents to PAEs occurred in the last ten years (3.4% of transfers). These acquisitions are largely concentrated in two large PAEs that acquired about 70% of all PAEs-acquired university patents: Intellectual Ventures and Intellectual Discovery. An econometric analysis on the characteristics of university patents transferred to PAEs shows that patents transferred to PAEs are of high quality, suggesting that PAEs cherry pick good patents for monetization purposes. However, PAEs acquire from universities older patents than those transferred to producing companies. This fact suggests that these transfers are not linked to technology transfer.

IMPORTANT INFORMATION ABOUT a society can be learned from studying its institutions, government, industries, art, and culture. This is also true if we want to learn the way these societies lived in the past. For example, much can be learned about the Venetian society between the 13thand 18th centuries by investigating its glassmaking industry. At that time, being involved in this sector determined where you could live in Venice, your social status, whom you could marry, and whether you could travel abroad. Glassmaking was one ofthe two largest industries ofthe early modern Venetian economy—the manufacturing of silk was the other—and it employed a substantial portion ofthe city's corporate labor force: in the late 18th century about 30 percent ofthe Venetian artisans were glassmakers. During the 12th century, the Venetian Republic became active in regulating the activity of artisans and merchants operating within its commonwealth. The making of glass, one of the Republic's most lucrative industries, was clearly a source of great interest to the Venetian government, and regulations specific to this sector were issued by the Senato, the Maggior Consiglio, and the Consiglio dei Dieci. The goal ofthis regulatory activity was, in large part, to ensure the quality of the Venetian glassware and maintain the reputation ofthe Republic's products in international markets. However, they were also, and perhaps more importantly, designed to keep glassmaking knowledge within Venice's borders; for example, in 1173 the Venetian Republic enacted legislation that granted to guilds the exclusive right to practice “mechanical trades.” Consequently, the glassmaking industry became the domain of a system of four or five guilds that restricted their art to Venetian, male glassmakers. Foreigners and women were generally excluded from membership. Although it was strongly protectionist, the 13th-century Venetian Republic also energetically promoted innovation, and specifically sought to attract inventors from abroad.

In recent years, much discussion in patent law has revolved around granting tailored protection to provide better incentives to inventors in different industries and to increase patent quality. For example, the deliberations that led to the enactment of the Leahy-Smith America Invents Act (AIA) focused specifically on the role of the patent system in different industries as well as on modifying remedies and patent terms to reflect the needs of distinct technology sectors. Whereas in the literature there seems to be substantial agreement on the fact that tailored protection would be beneficial for the effectiveness of the patent system, there is no consensus with respect to which entity should be vested with the authority to produce tailored patent policies, standards and rules based on the needs of the various industries. Currently, the United States Court of Appeals for the Federal Circuit and the United States Patent and Trademark Office (USPTO) are the two principal candidates for this role. Some of this debate is connected to the broader issue in legal academia of granting general regulatory authority to administrative agencies with highly specialized knowledge. Contrary to other administrative agencies, such as the United States Environmental Protection Agency (EPA), the Securities and Exchange Commission (SEC) or the Occupational Safety and Health Administration (OSHA), Congress has never granted such authority to the USPTO; scholars have criticized this inconsistency. The strongest argument they have used to question the current status of the USPTO refers to the fact that much could be gained from the information that this agency has accumulated through years of experience working with inventors in different industries, particularly with respect to tailoring patent protection. Historically, the Venetian Republic provided tailored patent protection based on the characteristics of the invention. In that context, the entity entrusted with the power to tailor the protection granted in each case was the Senate, the issuing authority. Moreover, although the Venetian Republic enacted what is widely recognized as the first Patent Act in the world in 1474, the Venetian Senate continued its practice of granting tailored patents until the end of the Republic in 1797. In fact, as explained by Luigi Sordelli in 1974, following the enactment of the 1474 Act, inventors could obtain protection in Venice in two ways: through the newly created statutory system or through the much older customary system of senatorial grants. Conclusive evidence that Sordelli’s view was correct is provided in a separate paper that I co-authored with Ted Sichelman and Toni Veneri, in which we shed important new light on the true origin of patent law. In this article, I focus instead on tailoring patent protection. Specifically, I use original documents from the Venetian State Archives to present a detailed account of how the Venetian Republic used its customary patent system to tailor protection to the unique characteristics of an invention. Furthermore, I provide a full analysis of what can be learned from the Venetian experience to inform the modern debate on tailoring patent protection. Until now, only two other legal scholars have conducted extensive examinations of the original Venetian patents: Ted Sichelman and Sean O’Connor. The Venetian patent system appears to have been a very successful one; it operated for more than 300 years and during the 16th century helped Venice to transform itself from being a nation of sailors to being a nation of artisans and engineers, and ultimately the center of technological development in Europe. Thus, the Venetian customary patent system offers important lessons on how tailored patent protection and higher patent quality can be achieved. An accurate description of this system is crucial to further understanding the specific steps that we should take to reach these goals today.

The Supreme Court’s decisions in Bilski as well as in Alice have significantly reduced the level of patent protection provided to software and business methods in the U.S. Nevertheless, Article 27(1) TRIPS establishes that WTO countries must offer protection to any invention, whether product or process, without discrimination based on the field of technology. Is the U.S. currently in violation of its TRIPS obligations? Although there is no clear understanding among WTO countries regarding whether Article 27(1) TRIPS covers software and business methods, the U.S. has consistently interpreted this provision as requiring these subject matters to be protected. This interpretation is found specifically in the context of the review of other countries’ IP laws when they became WTO members. Thus, it appears unlikely that the U.S. will be able to argue otherwise in future international negotiations or in the case of a possible WTO challenge to §101 of the U.S. patent code - as interpreted by the Alice and Bilski decisions. More importantly, this result exposes the U.S. to opposing strategies by other WTO countries that diminish its ability to promote TRIPS compliance in any significant way. The relevance of the conformity of the Alice and Bilski decisions to Article 27(1) TRIPS goes beyond the appropriate level of protection that must be provided to software and business methods to avoid a violation of international obligations on patentable subject matter. Much more is at stake. Indeed, NPE activity in the U.S. is highly dependent on the availability of enforceable software and business methods patents. The issuance of the decisions in Alice and Bilski appears to have seriously harmed the operation of these companies. However, the international perspective offered in this article raises the question of whether these two decisions indeed represent the last word on the eligibility of processes to receive patent protection, or whether there will be additional Supreme Court interventions to restore protection on software and business methods to a more intermediate level. Finally, in recent years, there has been substantial discussion on patent reform to curtail NPE activity. However, the aftermath of the Alice and Bilski decisions seems to have reduced the urgency for legislative intervention in this area. This article highlights the fact that such a conclusion might be premature and that if it is, indeed, established that the operation of NPEs impedes innovation, patent reform might still be necessary to effectively limit the activity of these companies.

Is it true that non-practicing entities (NPEs) are primarily a U.S. phenomenon? Over time, several definitions of NPEs have been presented. They range from research institutions that hold patent portfolios for their inventions but do not develop and commercialize any products, to IP asset management firms whose exclusive business is asserting patent claims to collect significant fees from companies operating in certain industries. The latter are also referred to as “patent trolls” and have been the subject of significant debate as to their role in the innovative process in different fields. NPEs are a relatively new phenomenon. Studies have shown that their activity has only become prominent in the United States during the last decade. And these studies have suggested that NPEs are not nearly as active in other countries, namely European countries. Nevertheless, no prior research has attempted to quantify the extent of the international NPE problem nor find possible explanations for the difference. This article investigates whether NPEs are indeed less active in Europe. Interestingly, the findings indicate that NPEs are present in Europe, but their operations there are minimal compared to their operations in the United States. This article discusses possible explanations for this finding, including a comparative analysis of key differences between European and US industries, remedy systems, and judicial cultures. This article demonstrates that NPE activity in Europe is more depressed than in the United States because the affected industries–electronics, machinery and computer equipment, software and communication–are smaller in Europe than on the other side of the Atlantic Ocean. It also shows that NPEs operate in Europe DESPITE the presence of certain features of local legal systems – such as fee-shifting - that advocates of patent reform have recommended for adoption to control NPE activity in the United States. Consequently, this article questions the supposed effects of those proposed reforms. Finally, this article cautions against reforming the current U.S. patent system to make it more similar to European ones, as the European industries targeted by NPEs are less prosperous than their US equivalents. The impact of these proposed reforms on the activities of PRACTICING entities has not yet been adequately questioned. Even the question of whether NPE activity is in fact harming innovation has not been conclusively answered. Thus, much more investigation is necessary in this field before it would be wise to reform the patent system.

This Article applies a new paradigm from the field of computer science — inconsistency robustness (IR) — in order to analyze the competing ways in which the Supreme Court and Federal Circuit craft patent law standards and rules. The IR paradigm is a shift from the previous paradigm of inconsistency elimination. The new IR paradigm recognizes that modern, complex information systems must perform notwithstanding persistent and continuous inconsistencies. The focus on IR encourages system designers to recognize the reality of persistent inconsistency when building robust systems that can perform reliably. Legal systems regularly process a great deal of complexity and inconsistency, and thus, by necessity, have always been structured to be inconsistency robust. Accordingly, applying insights from the formal IR paradigm is helpful in analyzing the effective functioning of legal systems.

In the last few years, there has been a renewed interest in the validity of patenting business methods. The issue appeared to be settled in 1998 with State Street Bank & Trust Co. v. Signature Financial Group, Inc. However, in 2008, the Federal Circuit, responding to a more restrictive approach toward the patent system adopted by the Supreme Court, began questioning the soundness of the policy to extend patent protection to business methods. The Federal Circuit’s adjustment of its position occurred explicitly in In re Bilski when the court decided to rehear the case en banc and reconsider the conclusions previously reached in State Street. The Supreme Court subsequently granted certiorari on In re Bilski, and its Bilski decision in June 2010 exacerbated an already heated debate on the patentability of certain subject matters. Ultimately, this quandary about patentability revolves around the empirical question of whether the patent system in a specific sector is “doing its job” or, more specifically, whether the patent system is fostering the creation of additional business methods. To answer this question, I conducted an empirical investigation that involved structured interviews with market participants about the production and consumption of financial methods as a subset of business methods. The data collected in this study reveal that market participants are ambivalent about the benefits that both the financial market and their companies can derive from having exclusive rights on financial inventions. The data also provide a description of the financial market and its dynamics that is difficult to reconcile with the protection of business methods, as currently provided by the patent system. Thus, it raises serious doubts that, in the ten years between State Street and In re Bilski, patent protection has had any impact on innovation in the financial industry.

Has there been a change in the level of innovation of financial methods subsequent to the State Street decision that allowed the award of patents to protect such methods? Ten years following the issuance of State Street, the patentability of business methods is still so controversial that the Federal Circuit has recently considered overruling its own precedent by rehearing In re Bilski en banc. The goal of the patent system is to promote innovation. If an increase in the level of innovation of financial methods is not present, the adoption of this form of intellectual property to protect creativity in the industry is unjustified and, potentially, even harmful. Indeed, it is important to ascertain the correct balance between encouraging innovation on the one hand, and leaving enough “raw material” upon which individuals can build new ideas on the other. A first step in accomplishing this objective is to understand whether the patent system is “doing its job” or, in other words, whether the provided protection is actually inducing innovation in a specific industry. In this article, the author presents an empirical study of innovative types of securities that have emerged over the past 25 years. The author also investigates the patent practice of the financial industry and identifies the patent applications submitted and the patents issued on different types of securities. Finally, the author discusses her findings and concludes that, recently, creators of new types of securities have shown less interest in the patent system. Nevertheless, the rate of innovation in this field has remained constant. At this time, the available data are not sufficient to reach an entirely conclusive determination with respect to whether the patent system has affected the design of new types of securities. However, the results are still of great significance and cast doubts on the soundness of the State Street decision, at least to the extent that it involves the financial industry. By deciding In re Bilski, the Federal Circuit now has the opportunity to readdress the issue of the patentability of this subject matter in a way that more closely reflects the goal of the patent system as it is described in the Constitution.

The summer of 2008 was a time of great importance the patentability of processes. Indeed, on May 8, 2008 the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) heard a case that many observers signaled as having the potential to become a turning point for this category of patentable subject matter. The case was In re Bilski; its decision on October 30, 2008 confirmed everyone’s expectations of a significant change in the patent system. With 'In re Bilski' the court did not explicitly overrule State Street Bank and Trust Co. v. Signature Financial Group, but certainly took several steps to distant itself from the results reached in that decision ten years before. Indeed, the court reconsidered the State Street test and concluded that it was inadequate to determine whether a process is eligible for patent protection under 35 U.S.C. §101. The court indicated that the appropriate test is rather the machine-or-transformation test previously outlined by the Supreme Court in a number of decisions. 'In re Bilski' is in line with numerous cases that recently have emerged both at the Supreme Court level and at the Federal Circuit to promote a more restrictive view of proper subject matter for patent protection as compared to past decisions. Nevertheless, it is still possible to speculate about the issues that Bilski will generate. The first issue in the aftermath of Bilski is related to the transformation prong of the machine-or-transformation test and consists of the possibility that this requirement will hinder, rather than promote, innovation in the newest fields of endeavor where the need for patent protection is perhaps the highest. A second issue focuses on the machine prong of the machine-or-transformation test. Indeed, commentators have already suggested that this part of the test will result in a return to the 'doctrine of the magic words' described by Cohen and Lemley in 2001. Finally, the last relevant issue raised by In re Bilski regards the Supreme Court’s grant of certiorari on June 1, 2009. Here, it is worth emphasizing that the highest Court’s intervention in a 35 U.S.C. §101 case at this point, is certainly desirable to increase the understanding of the role the current patent system will play in fostering innovation in future technologies. In this article, the author presents a modest attempt at shedding light on the aforementioned issues by analyzing the conversation that she had with Judge Rader on the issuance of In re Bilski and by investigating the cases decided by the Board of Patents Appeals and Interferences that apply this decision.

Has there been a change in the level of innovation of financial methods subsequent to the State Street decision that allowed the award of patents to protect such methods? Ten years following the issuance of State Street, the patentability of business methods is still so controversial that the Federal Circuit has recently considered overruling its own precedent by rehearing In re Bilski en banc. The goal of the patent system is to promote innovation. If an increase in the level of innovation of financial methods is not present, the adoption of this form of intellectual property to protect creativity in the industry is unjustified and, potentially, even harmful. Indeed, it is important to ascertain the correct balance between encouraging innovation on the one hand, and leaving enough "raw material" upon which individuals can build new ideas on the other. A first step in accomplishing this objective is to understand whether the patent system is "doing its job" or, in other words, whether the provided protection is actually inducing innovation in a specific industry. In this article, the author presents an empirical study of innovative types of securities that have emerged over the past 25 years. The author also investigates the patent practice of the financial industry and identifies the patent applications submitted and the patents issued on different types of securities. Finally, the author t Stefania Fusco is a JSD Candidate at Stanford Law School. I have many individuals to thank for their contribution in this project. I have significantly benefited from the collaboration with my advisor, Professor Mark A. Lemley, whose comments helped me to carefully rethink and refine my position of the issues discussed. I am thankful to Professor R. Anthony Reese for his precious comments. I have also benefited from my discussions with the employees at MSCI Barra. Finally, I am grateful to my husband, Davide Negri, for being such an incredible source of inspiration and for providing infinite encouragement, support, and understanding. 244 SANTA CLARA COMPUTER & HIGH TECH. L.J. [Vol. 25 discusses her findings and concludes that, recently, creators of new types of securities have shown less interest in the patent system. Nevertheless, the rate of innovation in this field has remained constant. At this time, the available data are not sufficient to reach an entirely conclusive determination with respect to whether the patent system has affected the design of new types of securities. However, the results are still of great significance and cast doubts on the soundness of the State Street decision, at least to the extent that it involves the financial industry. By deciding In re Bilski, the Federal Circuit now has the opportunity to readdress the issue of the patentability of this subject matter in a way that more closely reflects the goal of the patent system as it is described in the Constitution.

INTRODUCTION In the last few years a renewed interest in the validity of patenting business methods has emerged. The issues appeared have been settled in 1998 with the State Street Bank and Trust Co. v. Signature Financial Group, Inc. decision. (1) However, in 2008, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), following the more restrictive approach toward the patent system adopted recently by the Supreme Court, (2) has questioned the soundness of the policy of extending patent protection this type of subject matter. The change of scenario happened explicitly in In re Bilski (3) when the Federal Circuit decided rehear the case en banc and openly solicit amicus briefs on whether State Street should be overruled. (4) The issue under consideration revolves around an empirical question: does the patent system indeed foster innovation in business methods? If so, patent protection may not only be appropriate, but needed because society benefits from the increased knowledge engendered by this form of incentive. However, if an increase in the level of innovative business methods does not occur as a consequence of providing patent protection them, State Street should be overruled, because society can be hurt by the grant of property rights that do not produce additional knowledge in return. The focus of this paper is on innovation in financial methods (as a subset of business methods) and, more specifically, in the production of new types of securities over the past twenty-five years. Its purpose is investigate whether after State Street there has been an increase in the level of innovation in new types of securities which could correlate the adoption of patents protect them. Therefore, Section I of this paper is dedicated a brief overview of the relevant cases on the patentability of business methods. Section II focuses on the studies of financial innovation which have been produced so far. Particular relevance has been given those research studies that empirically analyze the effects produced by the recent interaction between the patent system and the financial industry. Section III describes the present research project and the method adopted perform it. Finally, Section IV illustrates the data collected through the selected method and provides a full data analysis. I. PATENTABLE SUBJECT MATTER The Copyright and Patent Clause of the U.S. Constitution gives the Congress the power to promote the Progress of Science and useful Arts, by securing for limited Times Authors and Inventors the exclusive Right their respective Writings and Discoveries. (5) This constitutional provision is complemented in relevant part by 35 U.S.C. [section] 101, which prescribes that patent protection must be granted any applicant who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.... (6) Together, the US Constitution and the Patent Act define what is known as patentable subject matter. The language of these provisions suggests a very broad scope of patent protection which, however, is not unlimited. Indeed, three judicially created exceptions (7) contribute providing the required guidance determine what, under U.S. law, is considered be good patentable material. Specifically, these three exceptions include: laws of nature, natural phenomena, and abstract ideas. (8) From time time, significant debates have surrounded interpreting the meaning of the aforementioned provisions. Scholars and critics of the patent system have often speculated about determining the ultimate boundaries of patentable subject matter. A definitive answer this issue has yet emerge. The only unquestionable conclusion that one can derive from the overall scenario is that, primarily due judicial intervention, these boundaries change over time, perhaps in relation altered economic circumstances or the emergence of new technologies. …

INTRODUCTION I. HISTORICAL BACKGROUND, DEFINITION, AND INTERNATIONAL REGULATION. A. Historical Background B. Definition C. The International Regulation of GIs II. THE MULTILATERAL REGISTER FOR WINES AND SPIRITS A. Background and Proposals 1. Background 2. The Proposals for the Multilateral Register B. The TRIPs Agreement 1. The Negotiations on the Protection of GIs before the TRIPs Agreement 2. Article 23(4) of the TRIPs Agreement C. Final Considerations 1. Brief Analysis of the Proposed Systems III. THE EXTENSION OF ARTICLE 23 OF THE TRIPS AGREEMENT TO GIS ON PRODUCTS OTHER THAN WINES AND SPIRITS A. Why Are GIs Needed in the First Place? B. The Debate about the Extension of Article 23 of the TRIPs Agreement 1. GIs as Generic Terms 2. Consumer Protection and Agricultural Policy. 3. Developing Countries and the Issue of Traditional Knowledge 4. Preservation of Culture 5. Costs of GI System 6. Imbalance Between Countries with Regard to Existing GIs C. Practical Perspective About the Extension of Article 23 of the TRIPs Agreement IV. GENERIC TERMS, PRE-EXISTING RIGHTS AND THE EU INITIATIVE TO RECLAIM THE EXCLUSIVE USE OF CERTAIN GIS A. The Issue B. Generic Terms and the Issue of Pre-Existing Rights CONCLUSION APPENDIX INTRODUCTION The international regulation of Geographical Indications (GIs) on products is one of the most contentious issues in the international negotiations among World Trade Organization (WTO) member states. The discussion revolves mainly around three issues: (i) the creation of a multilateral register for wines and spirits, (ii) the extension of the higher level of protection already existing for wines and spirits to other products, and (iii) the European Union (EU) initiative to regain the exclusive use of certain GI names. The United States and the EU are the two main trading blocks that have set forth the opposing arguments that define the scope of this active debate. The purpose of this paper is to provide a thorough analysis of the most significant arguments presented by WTO delegates and scholars in support of or against the aforementioned issues. This project also represents an attempt to propose a policy recommendation for the solution of the conflict. This recommendation takes into consideration, to the largest extent possible, the interests of all the parties involved. The regulation of GIs in the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement was the result of a significant compromise among the WTO member states in which the political and economic interests of each of the members was taken into account. The result was a hybrid discipline in which identifiers for similar products are treated in significantly different ways for no apparent logical reason. As part of this compromise, the WTO member states agreed in Article 23 of the TRIPs Agreement to negotiate the establishment of a multilateral system of notification and registration for wines and spirits. Several proposals have been presented over the years on this subject, and they can be generalized into two main themes of argument: one theme proposed by the EU and the other by the United States. The former proposes the creation of a multilateral register, whereas the latter supports the establishment of a voluntary database. From reading the TRIPs Agreement and the available unrestricted documents prepared during the negotiations, it is clear that the WTO member states, in entering the agreement, settled on the establishment of some kind of multilateral register for wines and spirits, and therefore, the EU proposal on this subject is more in line with the signatories' expectations. This multilateral register should not be forgone unless a more efficient system that serves the TRIPs purposes can be identified. …

For many producers and consumers, geographical indications (GIs) are more than mere economic tools as in many cases they also represent the historical and social identity of particular communities located in a particular territory. However, other interested producers and consumers, because of differing historical and economic backgrounds, do not share the same understanding of GIs and, to a certain extent, consider their protection as a form of unjustified protectionism.This paper presents a study of the international regulation of GIs on products. The purpose of this research is to understand the level of protection that this kind of identifier should receive in order to protect consumers against increasing research costs and balance the promotion of high quality products with the needs of a competitive global market.Despite the recognition of the existence of other significant factors involved in the investigation of this topic, I developed this research through an economic approach, which allowed me to understand the problems underlying the international negotiations on GIs in a more dispassionate manner. I concluded that given the absence of a more efficient alternative, the adoption of a multilateral register for wine and spirits is required. The extension of TRIPS art.23 to products other than wine and spirits should be warranted only in the presence of a strong economic justification. Finally, the EU request to regain the exclusive use of certain GIs should be rejected, as this initiative is not supported by any legitimate basis.