Attached is a list of our member institutions. Those universities which have institutional patent agreements are marked with an asterisk.

I hope this information will be useful. If we can be of further assistance, please do not hesitate to contact our office.

Sincerely,

Enclosure

Rochelle E. Scissors
Administrative Assistant

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Mr. STURGES. Is the University of California one of those exceptions?

Dr. JONES. It is.

Mr. STURGES. Why would some of your members not seek an IPA?

Dr. JONES. There have been some disagreements to this agreement and it may seem illogical-grounds of principle so that although they have not said we would not have one under any circumstances, they have said there are certain provisions that we do not like and we will not have such an agreement under these conditions. That is the way I understand it.

I have not been involved and I am speaking from hearsay, and therefore, I would ask that my testimony be taken in that light.

Mr. STURGES. Can any of the other two offer any instances?

Mr. SMITH. I am not sure I can comment on that question. I assume there are certain universities that have applied for IPA and have not been qualified. You have to meet minimum qualifications.

Mr. STURGES. Assuming your members would be more likely to qualify.

Dr. JONES. Out of the 48, 29 returned the information you were mentioning which represented, I think, the principal ones involved. in an aggressive licensing program.

Mr. MCCARTNEY. I am somewhat familiar with that, being from a sister university. However, the University of California system administers its patent policy for all nine campuses from their Berkeley headquarters, and one of the areas of disagreement by California with accepting IPAS is the restriction on the patent royalty income. There have been waivers requested on individual basis with HEW, but in the past this ideological policy difference is the reason IPA has not been applied for or accepted by the University of California system.

It is my understanding now they have applied for an IPA but it has not been issued yet.

Mr. STURGES. Dr. Jones, granted it would be hearsay and not of your own direct knowledge, have you any additional examples?

Dr. JONES. I went over the forms that were returned and I noticed several. I did not take note of who they were, and I could not make further specifications.

I would be glad to give staff that information if you like.'
Mr. STURGES. Please.

As you know the Government-wide IPA provides the institutions shall not bar or prohibit publication of disclosures of subject inventions on which patent applications have been filed.

In commenting on the draft regulations the Wisconsin Alumni Research Foundation wrote the implication of this language is that where no patent application is filed, the institution can bar or prohibit publication without limitation.

The comment by the interagency committee in response was that a university has this prerogative.

Now, does this mean that if a scientist were en route to an international meeting to read a paper and announce a discovery on which patent application has not been filed, he could be asked not to go?

1 Information not submitted as of July 28, 1978.

Dr. JONES. I would say that would be a very grave mistake on the part of the administration if he had gotten that far.

I think, on the other hand, counseling is generally the practice of making clear what things are at stake. Certainly one of the most important traditions of the university is the dissemination of knowledge. That is the major concern. I know of no case where publication has been held up for more than 60 days, and those were cases where the invention looked like a rather valuable property, and the problem with that is the formal filing of the patent application.

In the United States you can disclose, you can publish. You have 1 year after publication for filing. But in many western countries, unless you have applied in the United States, formally applied for a patent before publication, or, alternatively, apply abroad before publication, you are not eligible for a patent. This is the fly in the ointment, so to speak, and one which has led the Department of Energy to require some papers 60 days before publication, with provisions for essentially indefinite delay while the patent application is prepared.

That ruling has been recently modified somewhat, and Mr. McCartney can remark on that. This is a rather delicate question and brings up questions which are of greatest importance at this point in the development of our country's technological lead. The questions are: Who should be responsible for foreign filings and how aggressive would the Government managers of patents be in deciding to invest the rather significant amount of dollars in filing abroad-an expensive process?

Further, many countries require an annual maintenance fee for so long as the patent is in force in that country, and this is quite a drain, which means you have to have a real and firm plan for pursuing the utilization of the invention in those countries in order to apply for and maintain a patent.

This is a rather complicated legal question on the one hand and a question which does fly into the face of one of the university's most sacred principles, and that is the freedom to publish; in fact, the requirement to publish. It has not proved a great problem and one we have been able to deal with without having to stop a scientist in midair!

The closest we came to that concerned cryptographic codes, but we will not go into that.

Mr. STURGES. The point I am trying to get at is the squeeze referring back to the letter Mr. Smith wrote urging that the IPA be made mandatory, that the agency be given no discretion.

If this provision were included, is there not a good potential difficulty? You say you know of no case delayed more than 60 days. Would this not allow the university holding an IPA to go for a much longer delay?

Mr. SMITH. I do not think holding the IPA, whether the university holds or does not hold an IPA, is at stake. The issue is the one of free dissemination of information.

In my experience at MIT, and I have been involved in patent licensing for 15 or 17 years, there has never been an action by the Patent Office where the Patent Office has indicated to an inventor you cannot publish that because we want to protect patent rights.

Instead, the only viable solution available to the university is to get those disclosures in as quickly as possible and get those patent applications on file. Often we are in a position of filing those applications the day before the inventor is on his way to a conference somewhere. What I am saying is the burden is not on the inventor in my experience as far as delay in publication. The burden is on the Patent Office within the university.

Dr. JONES. Let me ask Mr. Smith a question. When did you file your first foreign application? Is this relatively recent or have you done it for many years?

Mr. SMITH. We have been filing on a heavy-I would say on a reasonable foreign program for about, I guess, 8 years now, perhaps 7.

Prior to that we had filed, but not on the basis we do now.

or

Dr. JONES. The point is this is again a relatively new development, this problem of publication and patent rights is a question of foreign countries and this is a relatively new aspect of U.S. technological science.

Mr. STURGES. Would it not also be the case, though, that a factor contributing to the burden on the university patent office would be the need to search the scientific literature as well as the patent literature?

Do you search the scientific literature as well as the patent literature?

Mr. SMITH. You mean prior to filing?

Mr. STURGES. Yes.

Mr. SMITH. If we had the time. If we do not have the time, we file. The reason, you see, is the inventor himself researched that literature. He knows what the literature is because usually the disclosures coming are at the forefront of the technology which is why most universities are in favor of the IPA. We are dealing with a different type of technology from industrial technology. The inventor is at the forefront. He has already done the research.

Mr. STURGES. Mr. Chairman, could we ask one more question of Dr. Jones?

Chairman NELSON. Yes.

Mr. STURGES. Could we ask him in view of the charts we have, what public interest is in this whole area?

Is there a single definable public interest that covers grants for research and development, technology transfer, and licensing of universities?

Dr. JONES. Mr. Sturges, on the basis of my experience and although I am approaching retirement, it seems far too little-I would say my observation is that the most important thing we must address is getting technology to the using public and not leaving it in Government files which has been pretty much the history of the patents which have been taken by the Government in the past.

Of the 24,000 that are in the Government domain, only a relatively few have been licensed. I wish I knew the numbers. There had been 20 exclusives up to 1972. How many total licenses, including nonexclusive licenses, I have no data on, but by and large there has been almost negligible licensing activity, although there was a Government policy permitting licensing.

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