Hello all,
In our last issue, we talked about the US administration’s latest idea to tax patent value in the hands of patent owners, which was largely decried as boneheaded and impractical. Well, not only is this not dead, but the US government is eyeing another “deal” to line the public coffers. This time they are sharing profits and reclaiming ownership of patents owned by US universities, 50 years after Bayh-Dole created a well-established and predictable regime. I’m not a fan. More on this below.
I also discuss the latest trends on IPR discretionary denials in the PTAB, the only true paradigm change in the last decade that favors patent owners having to enforce their patents and some recent developments in Europe on the SEP front.
As usual, as I focus on the macro picture in this newsletter, I want to remind everyone that we track everything that is going on in this world and for those who need their regular dose of news, once again you can follow me on LinkedIn where I post almost daily about some of the most newsworthy events. If you want to catch up on what grabbed my attention these recent weeks, you can access all my posts directly here.
Happy reading!
Louis
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Tangible IP News
Welcome IP Dealstream™: our new Compact Portfolio Exchange. Over the last 15 years since its inception, Tangible IP has earned it stellar reputation by brokering only high-quality patent portfolios. Unfortunately, with up to 5 new opportunities to review each day, there is only so much we can take under brokerage. We focus on larger sets of patents with evidence of use demonstrated by detailed “litigation grade” claim charts. Unfortunately, this leaves aside many smaller portfolios, hidden gems that represent meaningful innovations that are often relevant to industry. Hence the creation of a new conduit to market some of those going forward.
As a result, we have recently announced that we launched IP Dealstream™: Compact Portfolio Exchange as a way to give a voice to those inventors and innovative companies that have created great IP, but do not necessarily meet the bar of some buyers who prefer to invest in large sets of assets. The details of this new program are available here. We invite our readers to visit often on our website as we start adding new offerings each week.
We are also pleased to report that both our CEO Louis Carbonneau and our Senior V.P of Brokerage Erika Warner have been included again in the selected list of IAM’s World’s Leading IP Strategists, Louis for the 13th consecutive year and Erika for the third time in a row. Only those individuals identified by their peers for their exceptional skill sets and profound insights into patent matters make the cut each year.
As we have discussed in previous issues, we have looked at several patent analytics packages and are currently using Limestone|Report. What sets Limestone|Report apart is its ability to provide a comprehensive view of portfolio pedigree while effectively identifying potential infringers. What about you? Well, our good friends at Techson IP have agreed to extend special pricing to our readers so that you can try it for yourself. You will receive a 25% discount off their standard pricing on your first project through 12/31/2025 * if you use this link.
In addition, if your organization is looking to acquire patents, either because of an urgent need or to meet a longer term freedom to operate goal, feel free to contact us at info@tangibleip.biz. We can source relevant assets and approach patent holders anonymously on your behalf, all the way to closing a transaction.
All of our patents for sale are listed here. Similarly, if you’d like to be added on our distribution list in the future so that you are the first to receive new opportunities, please email us at info@tangibleip.biz.
Happy reading!
Louis
__________________
Tangible IP News
Welcome IP Dealstream™: our new Compact Portfolio Exchange. Over the last 15 years since its inception, Tangible IP has earned it stellar reputation by brokering only high-quality patent portfolios. Unfortunately, with up to 5 new opportunities to review each day, there is only so much we can take under brokerage. We focus on larger sets of patents with evidence of use demonstrated by detailed “litigation grade” claim charts. Unfortunately, this leaves aside many smaller portfolios, hidden gems that represent meaningful innovations that are often relevant to industry. Hence the creation of a new conduit to market some of those going forward.
As a result, we have recently announced that we launched IP Dealstream™: Compact Portfolio Exchange as a way to give a voice to those inventors and innovative companies that have created great IP, but do not necessarily meet the bar of some buyers who prefer to invest in large sets of assets. The details of this new program are available here. We invite our readers to visit often on our website as we start adding new offerings each week.
We are also pleased to report that both our CEO Louis Carbonneau and our Senior V.P of Brokerage Erika Warner have been included again in the selected list of IAM’s World’s Leading IP Strategists, Louis for the 13th consecutive year and Erika for the third time in a row. Only those individuals identified by their peers for their exceptional skill sets and profound insights into patent matters make the cut each year.
As we have discussed in previous issues, we have looked at several patent analytics packages and are currently using Limestone|Report. What sets Limestone|Report apart is its ability to provide a comprehensive view of portfolio pedigree while effectively identifying potential infringers. What about you? Well, our good friends at Techson IP have agreed to extend special pricing to our readers so that you can try it for yourself. You will receive a 25% discount off their standard pricing on your first project through 12/31/2025 * if you use this link.
In addition, if your organization is looking to acquire patents, either because of an urgent need or to meet a longer term freedom to operate goal, feel free to contact us at info@tangibleip.biz. We can source relevant assets and approach patent holders anonymously on your behalf, all the way to closing a transaction.
All of our patents for sale are listed here. Similarly, if you’d like to be added on our distribution list in the future so that you are the first to receive new opportunities, please email us at info@tangibleip.biz.
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Deny, Deny, Deny… Oops, let this one go!
Based on the latest developments in discretionary denials of IPRs before the PTAB, Acting Director Coke Morgan Stewart has continued the trend of mostly denying institution, with 16 out of 19 recent decisions granting patent owners’ requests for discretionary denial. The “settled expectations” doctrine (i.e. if you knew about these patents all these years, what took you so long to challenge them?) remains a dominant factor, where patents that have been in force for six years or more are generally protected from IPR challenges based on the theory that patent owners have developed reasonable expectations about the validity of their long-standing patents. Stewart has confirmed that even patents in force for as little as six years can establish sufficient settled expectations, as demonstrated in her denial of AMD’s petitions against Advanced Cluster Systems.
However, two notable cases have defied this established trend, suggesting the doctrine is not absolute. In an anomalous decision involving Home Depot’s challenge to H2 Intellect’s 12-year-old patent, Stewart allowed the IPR to proceed after finding Home Depot’s argument persuasive that the patent had not been commercialized, asserted, or licensed in Home Depot’s technology space, giving the petitioner its own settled expectations. Additionally, one of TSMC’s IPR petitions against Marlin Semiconductor was permitted despite the patent being in force for 15 years, because TSMC presented persuasive evidence that the USPTO made material errors during examination. These decisions indicate that while settled expectations carry significant weight, they are not dispositive when petitioners can demonstrate either their own settled expectations in a different technology space or substantial USPTO examination errors that materially affect patentability. We remind our readers that the very right of the USPTO Director to exercise such discretion is being challenged before the Federal Circuit Court, which has yet to hear the case.
SEP Patents Respite?
I rarely spend much ink on SEP patents because it is the realm of the mighty and they live in a world of their own and most developments happen in Europe. Nonetheless, I am remiss for not mentioning a couple of recent developments that will impact SEP patent owners and implementers alike.
- On July 16, the European Commission’s College of Commissioners formally withdrew its long-standing proposal to introduce new regulations governing Standard Essential Patent (SEP) licensing, which had initially aimed to streamline and improve transparency in SEP enforcement across technologies like telecommunications and smart devices. The proposal had faced strong resistance from both the European Parliament and Council, stalling its progress. The Commission stated it may reconsider if circumstances change. This marks a major shift in EU policy—dashing regulatory ambitions centered on SEP licensing and enforcement reform.
- On July 15, the UK government launched a formal consultation to explore stakeholder perspectives on the SEP landscape, including challenges faced by SEP holders and implementers in the digital technology sector. The consultation aims to identify hindrances to innovation and FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, with a goal of boosting transparency and facilitating smoother SEP usage in the UK.
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Our Main Story: Another Patent Money Grab?
In our most recent issues, I discussed two US proposals that shared a common theme: an effort by the Trump administration to monetize patent litigation or ownership. Both measures were widely decried as ill-advised and impractical. It will be interesting to see if they are still around a few weeks/months from now.
The “third” shoe just dropped a week ago or so when Commerce Secretary Howard Lutnick’s proposal to seize “half the profits” from university patents developed with federal funding. This -in my humble opinion- represents the most radical challenge to America’s innovation ecosystem since 1980 (if we set aside for a moment the PTAB, Alice-Mayo, etc.). The plan would fundamentally reverse the Bayh-Dole Act—legislation that transformed the United States into the world’s innovation leader by generating $1.9 trillion in economic impact and creating millions of jobs over four decades. One might charitably describe this as bold policy innovation. Others might call it shooting America’s innovation goose to see if there are any golden eggs left inside.
The Bayh-Dole Revolution Under Attack
The 1980 Bayh-Dole Act revolutionized American innovation by allowing universities, nonprofits, and small businesses to retain ownership of inventions made with federal funding. Before this landmark legislation, the government held roughly 28,000 patents but fewer than 5% were ever commercialized¹—apparently the federal bureaucracy’s approach to technology transfer made molasses look speedy. The Act’s decentralized approach unleashed extraordinary innovation: universities now generate $3.8 billion annually in licensing revenue, have launched 15,000 startup companies, and support 6 million jobs nationwide.
The current framework provides universities full ownership while granting the government specific reserved rights: a nonexclusive license for governmental use and “march-in rights” in four narrow circumstances—failure to commercialize, health emergencies, national security needs, or manufacturing requirements. However, these march-in powers have sat largely unused for over 40 years², gathering dust like that exercise bike you bought in January. Federal agencies have consistently rejected march-in petitions, including high-profile cases involving HIV drugs and rare disease treatments, apparently preferring to maintain their perfect record of non-intervention.
Lutnick’s proposal shatters this successful model with the subtlety of a wrecking ball. “If we give them the money, don’t you think it’s fair that the United States of America, and the taxpayers who funded it, get a piece of that?” he argued³. He has already demanded comprehensive patent lists from Harvard University and plans to expand to other major research institutions, claiming the government deserves ownership stakes in innovations funded by federal research grants. Because nothing says “entrepreneurial spirit” quite like Uncle Sam as your business partner…
The reaction has been overwhelmingly critical across party lines—a rare moment of bipartisan unity in these polarized times, though admittedly not the kind anyone was hoping for. MSNBC’s Morning Joe hosts labeled demanding half-profits “full, blown-out socialism”⁴ (I am sure the irony isn’t lost on our US based readers), while Republican Senator Rand Paul scoffed at government patent ownership as overreach (in line with his libertarian roots). When Morning Joe and Rand Paul agree on something, you know you’ve truly achieved something special.
Harvard University called the investigation “a retaliatory effort” while emphasizing their commitment to ensuring “the public is able to access and benefit from the many innovations that arise out of federally funded research”⁵. The Council for Innovation Promotion warned that “threatening a government takeover of intellectual property undermines inventors and the companies that bring those inventions to market,” injecting uncertainty that “punishes the entrepreneurs who take the risks needed to bring innovations to life”⁶.
Patent attorneys raised fundamental implementation concerns with the enthusiasm typically reserved for root canal procedures. Legal experts note that valuing patents “isn’t like doing your family budget—it’s fuzzy stuff,” describing patent valuation as “voodoo science” where “different sides can value the same patent at nothing or a billion dollars.” They argue the proposal creates dangerous uncertainty where “companies may be very hesitant to transact or license with the university if they know that their exclusivity from that license can be taken away by the government.” It’s almost as if businesses prefer knowing who actually owns what they’re licensing—how unreasonable!
The proposal’s most prominent supporter is Senator Bernie Sanders, who has long advocated for taxpayer returns on federal investments. “If microchip companies make a profit from the generous grants they receive from the federal government, the taxpayers of America have a right to a reasonable return on that investment,” Sanders stated⁷. In a development that surely has political consultants everywhere updating their “strange bedfellows” PowerPoints, Sanders finds himself agreeing with Trump administration policy. However, his support appears isolated among major political figures, like a lone voice shouting into the policy wilderness.
From a practical matter, let’s remember that research funding is routinely “commingled” among government grants, industry sponsorship, state grants, and philanthropy—a funding soup that would make even the most experienced accountant reach for the aspirin. Bayh-Dole applies if any federal support was used, but its regulations were never designed to allocate revenue in mixed-funding cases. Technology transfer offices execute complex agreements where companies pay for clinical trials and receive IP ownership, with universities serving merely as subcontractors.
If the government claimed a 50% stake in every federally aided patent, fundamental questions arise: Who gets paid by licensees? Would private funders suddenly share money with the government? Will we need to create a new federal agency called the Department of Patent Revenue Sharing? The uncertainty alone would chill collaborations faster than a polar vortex, as imposing profit-splits would force renegotiation of virtually every licensing and startup-equity deal involving federal funding—a legal quagmire that would keep lawyers employed for decades (I didn’t hear too many of them complain!)
Universities might restructure research as non-federal work to avoid the rule altogether, potentially driving private investment away from academic partnerships. Because nothing encourages innovation quite like forcing researchers to play funding source hide-and-seek. No clear mechanism has been proposed to handle joint funding scenarios, but hey, details are overrated.
The economic implications extend far beyond university budgets to threaten the entire innovation pipeline with all the precision of a hand grenade. Each university patent creates an estimated 15 additional jobs in the local economy, and university technology transfer has supported nearly $500 billion in GDP growth since 1996. The proposal would hit major research institutions hardest—Harvard generated $152 million in licensing revenue in 2022, while other top universities earned similar amounts. That’s a lot of money that apparently should have been going to the Treasury Department instead of those pesky innovation activities.
The pharmaceutical and biotechnology sectors face particular risks. These industries depend on exclusive licensing arrangements to justify the $1-3 billion investments required for drug development over 10-15 years. Government march-in rights for price control could devastate biotechnology startup formation, as venture capitalists become unwilling to fund companies whose intellectual property could be forcibly licensed to competitors. After all, VCs famously love uncertainty about whether the government might suddenly decide to redistribute their investments.
77% of university startups remain in their home states, creating regional innovation clusters that could collapse if patent uncertainty drives away private investment. The proposal could force a massive shift of innovation capital toward internal corporate R&D or offshore opportunities—because what America really needs is more innovation happening elsewhere.
International experience provides sobering warnings, assuming anyone is still interested in learning from history. European countries that modified university patent ownership structures saw dramatic negative impacts. Norway’s 2003 reform led to a 56% drop in startup formation by university researchers and a 45% decline in patent rates. Finland’s 2007 reform resulted in a 46% drop in academic patenting, demonstrating how ownership changes rapidly reduce innovation outputs. But perhaps American exceptionalism extends to being exceptionally good at policy mistakes too.
The proposal risks triggering systemic collapse of the innovation ecosystem through negative feedback loops that would make economists weep: reduced industry investment leads to fewer faculty entrepreneurs, which decreases startup formation, which reduces venture capital interest, which further diminishes industry partnerships. International competitors would benefit enormously from American innovation policy mistakes, probably while trying very hard not to look too grateful. China’s leadership must be wondering if this is some kind of elaborate gift.
The Trump administration’s proposal represents a fundamental bet that government bureaucracy can more effectively commercialize research innovations than the decentralized system of universities, entrepreneurs, and private capital that has driven American technological leadership. The historical evidence strongly suggests this bet would fail catastrophically.
Before Bayh-Dole, government-controlled patents achieved less than 5% commercialization rates, suggesting that federal agencies approached technology transfer with all the urgency of geological processes. The current American system has created the world’s most successful innovation ecosystem, generating trillions in economic value while maintaining American competitiveness in critical technologies. The Bayh-Dole framework has become a global benchmark, with other nations implementing similar approaches decades after recognizing U.S. success—apparently it took them a while to notice America was eating their innovation lunch.
As experts warn, “no one would build a house on land they might lose”—inventors and venture investors would demand far more upfront payment or simply avoid deals altogether. The proposal threatens to inject legal chaos into every research partnership and drive private investment away from university research. It’s the policy equivalent of announcing that property rights are now “suggestions.”
While legitimate concerns exist about ensuring taxpayer returns on federal research investments, Lutnick’s remedy threatens to destroy far more value than it could possibly generate—kind of like burning down the house to roast marshmallows. The proposal risks turning America’s greatest competitive advantage—its innovation ecosystem—into a bureaucratic liability.
The consensus among legal experts, university leaders, and innovation advocates is clear: forcibly clawing back university patents would be “extremely disruptive” and “highly destabilizing.” Rather than risking this proven system for uncertain government revenue, policymakers should focus on improving technology transfer efficiency or finding alternative methods to capture public value that don’t involve taking a sledgehammer to the innovation pipeline.
The stakes extend beyond immediate economic impacts to encompass America’s long-term ability to compete in artificial intelligence, biotechnology, clean energy, and other sectors critical to national security and prosperity. Policymakers would be wise to heed the overwhelming expert consensus that this represents a dangerous experiment with the foundations of American technological and economic leadership. After all, there are plenty of other ways to innovate in policy-making that don’t involve dismantling what’s actually working.
References
¹ Wikipedia. “Bayh-Dole Act.” https://en.wikipedia.org/wiki/Bayh%E2%80%93Dole_Act
² KTS Law. “Government Signals Potential Sea-Change Regarding March-in Rights Under Bayh-Dole.” https://ktslaw.com/en/insights/alert/2025/8/government%20signals%20potential%20sea%20change
³ The Daily Beast. “Howard Lutnick Reveals Donald Trump’s Next Cash Grab Shakedown Target.” https://www.thedailybeast.com/howard-lutnick-reveals-donald-trumps-next-cash-grab-shakedown-target/
⁴ The Wrap. “Morning Joe Rips Trump Administration’s University Patent Proposal as Socialism.” https://www.thewrap.com/morning-joe-trump-university-patents-commerce-secretary-socialism/
⁵ The Harvard Crimson. “Trump Administration To Investigate Harvard’s Patents.” https://www.thecrimson.com/article/2025/8/9/lutnick-patent-investigation/
⁶ Council for Innovation Promotion. “Council for Innovation Promotion Responds to Commerce Department Letter to Harvard.” https://c4ip.org/council-for-innovation-promotion-responds-to-commerce-department-letter-to-harvard-on-initiating-the-march-in-process/
⁷ Benzinga. “After Intel, Nvidia, Trump Administration Eyes Share In University Patents.” https://www.benzinga.com/news/education/25/09/47592706/after-intel-nvidia-trump-administration-eyes-share-in-university-patents