The University Record, May 20, 2002

Bill could change intellectual property rules

By Michael Waring
U-M Washington, D.C., Office

Congress is considering legislation that could have a major impact on the ability of state institutions, like the U-M, to maintain control of their patents, copyrights and trademarks.

Under a bill sponsored by Sen. Patrick Leahy, D-Vt., if a state and its various entities want federal protection for the intellectual property they create, they must be willing to waive the exemption from lawsuits they currently enjoy under the 11th Amendment.

This protection for states—known as state sovereign immunity—is being cast by Sen. Leahy as an unfair advantage for states. He and other supporters believe that the current system allows states to use federal intellectual property laws to protect their own patents, copyrights and trademarks, while also allowing them to infringe on others’ intellectual property, since they are immune from lawsuits under the 11th Amendment. Several recent court cases have upheld the principle of state sovereign immunity, even though a government study showed little evidence of university problems in this area.

Such a law could have a serious impact on the tech transfer that state universities are engaged in. Under the proposed legislation, an entire state would have to agree to waive its rights under sovereign immunity, not just individual institutions such as universities. Most observers in higher education believe that few states would be willing to give up this constitutional principle. In that case, state universities (who create most of the intellectual property in most states) would be left without federal protection for their patents, copyrights and trademarks, causing potentially huge economic harm to state universities and creating an incentive for researchers to leave for private institutions, where sovereign immunity is not an issue.

Action on the legislation has been delayed while representatives of higher education and the copyright content community hold a series of negotiating sessions. It also is hoped that the National Governors Association, states attorneys general and others will weigh in to raise concerns about this proposal.