|SCIENCE AND CENTS|
October 20, 1997
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Questions answered in this forum:
What exactly can scientists patent? Should we limit people's right to patent discoveries? How do you balance the need for long-term research versus the need for profits? Do politics affect scientific activities? What are the underlying economic and institutional issues? Viewer Comments.
February 24, 1997
Scientists clone an adult mammal for the first time.
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Paul Solman reviews a banner year for gene research.
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Biotechnology Industry Organization
John Grassi of Carmel Valley, CA, asks:
Can one actually patent "findings" or does one merely patent the techniques which produced them? It seems to me any researcher who invents a technique and/or its associated devices is as much entitled to commercial protection as anyone inventing a better mousetrap. However, if such a professor's time was in part compensated by public money then wouldn't "the public" have some claim as well. (i.e., should the professor be able to secure exclusive commercial rights?)
Prof. Eisenberg of the Univ. of Michigan replies:
There are two parts to this question. The first is a technical question about what sorts of things may be patented, and the second is a policy question about who should own patent rights in the discoveries made by faculty members working under government grants.
The patent statute permits the patenting of "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" that otherwise satisfies standards for patent protection. Courts have construed this language broadly to permit patenting of any tangible materials and methods that involve human intervention, but to exclude preexisting natural products and laws of nature. "Findings" that amount to new understanding of previously occurring phenomena will not be patentable, but new products and processes that make use of this new understanding may be patented. New techniques may be patented as processes, but an inventor who makes a new product through a new technique is not limited to patenting the technique. Indeed, a patent that is limited to a technique used to produce a finding would generally be of little value, since often it is unnecessary to resort to the technique again once the finding has been disclosed.
The patent statute also speaks to the second part of your question about ownership of the results of government-sponsored research. In 1980 Congress passed the Bayh-Dole Act, which allows universities and other institutions performing research with federal funds to retain ownership of discoveries that they choose to patent. Opponents of this statute raised the argument, embedded in your question, that the public has an equitable claim to share in the profits of the research that it has paid for. But the competing argument that won the day was that discoveries that emerge from government-sponsored research in universities require considerable further investment before they become available to the public as useful commercial products, and the only way to motivate industry to pick up where government funding leaves off and translate basic research discoveries into new products is to give them exclusive rights under patents. Universities argued that unless they could own the patents themselves, they would have no motivation to go to the trouble of pursuing the patent rights that are so important to industry, but would simply publish their discoveries to the world. Congress was persuaded, rightly or wrongly, that unpatented discoveries would never be of sufficient interest to industry to be brought to useful applications, and therefore they agreed to allocate patent rights to universities so that universities would go to the trouble of pursuing patent rights. It is generally the university, however, and not the individual faculty member, that owns the patent rights. Individual faculty members are generally required to assign patent rights in their discoveries to their universities, but they may retain patent rights if neither the university nor the sponsoring agency wants them, and they generally receive a share of any royalties on licenses.
Dr. Bloom of Science replies:
Scientific findings, until recently, were themselves only the starting point on the pathway to a commercially viable product. One might recognize the properties of a receptor for a hormone, or a possible disease that a new factor might treat, but getting a new unique medication requires much more work after this initial scientific "finding". With the recognition that gene structures can directly predict protein structures, and that certain members of families with inheritable diseases can have their potential vulnerability assessed through probes for that gene, a short cut to some applications with commercial value can now be envisioned immediately after a discovery. In general, the person who makes the discovery and the claim for its use in a patent application and succeeds in convincing a patent examiner of its unique position gets the rights. The Bayh-Dole Amendments require that those discoveries with commercial value funded from federally funded research be patented and developed into products. So, yes, the discoverer is obligated to seek developmental rights.Should we limit people's right to patent discoveries?