Protecting Your College From Patent Lawsuits Over Technology

Thursday, April 5, at 12 noon, U.S. Eastern Time

Jason Schultz is a staff lawyer at the Electronic Frontier Foundation, a nonprofit watchdog group that acts as a consumer advocate for digital rights. He specializes in intellectual property and reverse engineering and has led the Patent Busting Project, an endeavor to overturn software patents some consider too broad. He also teaches graduate classes in cyberlaw at the University of California at Berkeley's Boalt Hall School of Law and School of Information.

A transcript of the chat follows.

As long as the patent system is easy to exploit, there will always be more people applying for patents than the system can handle. So we must also cut back on the ability of certain entities to exploit the system and thus reduce the incentives to game the patent office.

One way to do this would be to carve out an exemption for educational institutions similar to those granted under the Fair Use doctrine in copyright law, so that non-profit educational use of technology for instruction or certain kinds of research would not qualify as infringement.

However, that said, there is really no reliable empirical evidence suggesting that patents are necessary to further innovation in the software industry. In other words, no one has shown that we need patents as incentives for people to make high quality, innovative software.

This is especially true with open source and free software. In fact, researchers such as Eric von Hippel at MIT (http://web.mit.edu/evhippel/www/) and Jim Bessen at Boston University (http://www.researchoninnovation.org/online.htm) have begun to show that we sometimes generate more innovation in the software world *without* patents, as patents can be a barrier to innovation in some instances.

So in my view, companies like Blackboard should only have a right to patent protection if patent protection is necessary to give them incentive to innovate. Given the huge market for CMS software and other educational technology tools, there seems to be quite a bit of incentive already to innovate in that market. If anything, the fact that Blackboard faces competition in the CMS market from Sakai and other projects would provide more incentive to innovate, not less. I don't see that changing any time soon.

The bottom line is that by suing D2L, BB has potentially hurt those colleges and universities that rely on D2L as a provider. They don't have to sue you directly if they go after your vendors.

As for the recent pledge, it is a nice gesture, but what they should really do is issue all colleges and open source projects an official license to their entire patent portfolio, royalty-free. A license is the most definitive way of saying "I won't sue you."

In addition, Acacia seems to have backed off on their demands that colleges and universities pay royalties on the DMT patents. If their demands kick up again, however, we are prepared to move more quickly on petitioning for a reexamination of the patents. That said, they are still on our list and we intent to bust the patents if the cable/satellite companies don't.

So the bottom line is: I think colleges can wait and see for a bit what happens and not worry about it for the moment. I would certainly think carefully and skeptically before paying any money to Acacia these days.

In my experience, colleges stay out of the patent game, at least when it comes to software, internet, and educational technology.

Fortunately, the recent US Supreme Court decision in the Ebay case has given courts more flexibility over whether or not to grant an injunction in patent cases, but the uncertainty over availability is still a factor for every technology user when it comes to patents.

Also, when users themselves are sued, there is the problem of having to defend yourself, which is costly and time-consuming. Hopefully, your vendor has agreed to cover the cost of your defense (usually called "indemnification").

However, the main voices in the debate have been large software and biotech companies. There hasn't been much of a voice for public interest groups or educational institutions. The only exception has been WARF (the Wisconsin Alumni Research Foundation), a notoriously aggressive licensing firm, who is firmly pro-patent.

If I were at a college, I would try to get my administration to speak out on the negative effects of patents on the future of education and educational technologies. A letter from several university CTOs, for example, would be a good way to start. I would also recommend contacting Mr. Berman's office, especially if your campus has administrators who are willing to testify as to the burden patents can place on limited educational resources. People can also contact me, as I am in touch with some of the folks working on these issues in D.C.

I expect that there will be some kind of reform bill passed in the next two years, so if educational institutions want to ensure some kind of protection from patent threats, now is the time to get involved! There may not be another chance for at least another 5-10 years.

If you would like to continue talking about this topic, please join the conversation at our Discussion Forums.

And be sure to join us for next week's Brown Bag. Our guest will be Cary Sherman, president of the Recording Industry Association of America, who will talk about the controversy surrounding students sharing music online and his attempts to get colleges to stop it.