Leading Universities Launch Innovative Patent PoolMarch 2, 2021
S&C advised on the pool, the first of its kind to receive favorable DOJ antitrust reviewThe United States’ leading universities spend billions of dollars each year on research activities, with results benefitting innovators at blue-chip companies and startups alike. But licensing the results of that research has been difficult, particularly when companies need to negotiate with many universities to implement new technologies. Until now.
Fifteen top universities—Brown, Caltech, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, USC, and Yale—turned to Sullivan & Cromwell in search of a way to make their licensing process more convenient and accessible. Our intellectual property lawyers, led by Garrard Beeney, Marc De Leeuw, and Dustin Guzior, pioneered a creative solution: A patent licensing pool that brings together hundreds of inventions in the physical sciences under the umbrella of a single licensing program.
These lawyers worked with the universities to structure a pool to ensure it would meet the licensing needs of the universities and outside innovators alike. The S&C team then sought review from the U.S. Department of Justice to ensure that the pool would not raise antitrust issues. The S&C team worked collaboratively with the DOJ, ultimately receiving a business review letter stating the DOJ’s view that the new pool—named the University Technology Licensing Program, or “UTLP”—does not present any concerns regarding potential competitive harm. In fact, the DOJ stated that the pool “is likely to create licensing efficiencies and increase output by expanding access to university inventions that may be unlicensed and under-utilized.”
UTLP is the first program of its kind to receive a favorable review from the Department of Justice, and as of January 2021, the patent pool is up and running. Click here to learn more about UTLP.
Intellectual Property Insights
Meet the Intellectual Property Team that Advised on UTLP:
Garrard Beeney, co-head of the Firm’s Intellectual Property and Technology Group, is recognized as a leading lawyer for intellectual property and licensing transactions and litigation matters. Mr. Beeney has handled patent and intellectual property matters before the U.S. Supreme Court, the International Trade Commission, the U.S. Patent Trademark Office, federal district and appellate courts, arbitrations in a variety of forums, and regularly advises on non U.S. litigation, particularly in the European Community. He has represented both plaintiffs and defendants in infringement actions and advises plaintiffs on patent selection in pre-suit due diligence. Mr. Beeney has also represented clients before U.S. and European competition law authorities, particularly at the intersection of intellectual property and competition laws.
Marc De Leeuw is a member of the Firm’s Litigation Group and represents clients in a range of high-stakes intellectual property, securities, antitrust, real estate, contract, bankruptcy, and other commercial matters. Marc has represented clients in a range of industries before the U.S. Supreme Court, federal district courts and courts of appeals, arbitration tribunals, the International Trade Commission, and state trial and appellate courts.
Dustin Guzior is a member of the Firm’s Litigation Group with a practice focused on antitrust and intellectual property matters, as well as complex commercial disputes in arbitration proceedings and trials. He has represented clients in merger clearance matters in a range of industries, including agriculture, pharmaceuticals, financial products and services, industrial equipment, energy, semiconductor technology and banking. He has also represented clients in patent infringement, patent licensing, trade secret, and commodities and securities disputes. He has participated in trials before the bench, jury and arbitral panels.
Learn more about our Intellectual Property practice and explore our insights in the following recent podcasts, articles and publications.
- DOJ Favorably Reviews University Patent Pool: Novel, Non-SEP Patent Pool Formed by 15 Leading Research Universities, Advised by Sullivan & Cromwell, Receives Favorable Business Review from DOJ
- Irish Data Protection Commission Fines Twitter for Failures in Notifying Data Breach: DPC Finds Twitter’s Irish Subsidiary Had Constructive Knowledge of a Personal Data Breach Through its Processor, and Thus Failed to Notify in a Timely Manner and to Adequately Document the Breach
- Antitrust Division Issues Update to 2015 Business Review Letter on IEEE Guidance for Standard-Essential Patents: Update to 2015 Business Review Letter to IEEE Provides Further Evidence That the Antitrust Division Seeks to Have Market Forces—Rather Than Pre-Set Rules—Impact the Terms of Licenses for Standard Essential Patents
- Garrard Beeney and Renata Hesse Author Chapter in The Intellectual Property and Antitrust Review