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WARF’s director named to national patent advisory committee

January 25, 2007 By Madeline Fisher

The leader of the Wisconsin Alumni Research Foundation (WARF) has become the first person from a university patent management office to serve on a committee that helps guide the U.S. Patent and Trademark Office (USPTO).

Carl Gulbrandsen, managing director of WARF, UW–Madison’s nonprofit patenting and licensing organization, was appointed last month to a three-year term on the national Patent Public Advisory Committee. Created by a 1999 Act, the committee reviews the USPTO’s policies, goals, performance, budget and user fees, and advises the office on ways to improve its services and efficiency.

Gulbrandsen’s nomination to the 12-member committee was supported by House Judiciary Committee Chair F. James Sensenbrenner and U.S. Rep. Mark Green. He was officially named to the committee by U.S. Secretary of Commerce Donald Evans.

As part of the panel, Gulbrandsen will give counsel to the USPTO and its director Jon Dudas, as well as prepare an annual report on the patent office’s operations for review by President Bush, Evans, and the Senate and House judiciary committees.

"My appointment gives the university technology-transfer community a seat at the table when it comes to shaping national patent policy," says Gulbrandsen. "My goal as a committee member will be to make sure the U.S. Patent Office understands how rule changes and legislation affect the intellectual property held by universities and the industries we routinely license technology to."

The Patent Public Advisory Committee consists of nine voting members who represent the diverse users of the USPTO, including independent inventors, entrepreneurs from small businesses, lawyers, corporate executives and academicians. It also includes three nonvoting members who represent labor organizations associated with the USPTO.

As the oldest university patenting and licensing office in the country, WARF has often provided leadership to the expanding field of university technology management. During the 1960s and ’70s, the foundation’s patent counsel (now emeritus) Howard Bremer played a critical role in securing passage of the Bayh-Dole Act, the legislation that underpins today’s technology-transfer industry. Passed in 1980, Bayh-Dole gave universities and small businesses the freedom to patent inventions arising from federally funded research and to license the technologies to companies.

More recently, Gulbrandsen, Bremer and Andrew Cohn, WARF’s government relations manager, worked closely with the USPTO to facilitate passage of the CREATE Act (for Cooperative Research and Technology Enhancement Act). Signed into law by President Bush last month, CREATE provides better protection for collaborative inventions made by scientists working at different institutions. USPTO Director Dudas also visited WARF’s Madison offices last spring as part of a two-day tour of Wisconsin to gather the experiences and concerns of U.S. patent holders.

"I’m very proud of WARF’s history of activism at the national level on patent matters, and honored to be continuing this tradition by serving on this committee," says Gulbrandsen. "I really hope my participation will make a difference for university inventors and the offices that patent and license technology on their behalf."

Gulbrandsen holds a doctorate in physiology and a law degree from the UW–Madison. He teaches patent law at the Law School and serves on the faculty of the Master’s in Biotechnology program. Before joining WARF in 1997, Gulbrandsen practiced patent law at a private law firm, and served as general counsel for a medical imaging company and a pharmaceutical firm. He became managing director of WARF in 2000.

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