Bibliography on the Enclosure of Science and Technology

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James Boyle:

"the intersection of intellectual property law and science and technology has been attracting considerable attention from scholars recently, some of it dismayed. The difficulty—and this is why I chose the case-study method for this chapter—is that there are multiple sets of concerns and they resist easy summary.

The first set of concerns is that the granting of intellectual property rights far “upstream”—that is very close to basic science—is impeding the process of science and technology. In addition, scholars have argued that the sheer volume of intellectual property claims will produce an anti-commons effect or patent thicket. Michael A. Heller and Rebecca S. Eisenberg, “Can Patents Deter Innovation? The Anticommons in Biomedical Research,” Science 280 (1998): 698–701. The argument here is that the closer one is to basic research the stronger the case is for leaving the information untouched by property rights—allowing all to draw on it and develop “downstream” innovations, which can then be covered by intellectual property rights. In practice, two concerns are often alluded to: the fact that much of the basic research is state funded and conducted in nonprofit universities and the belief that the transaction costs of licensing will inhibit research or concentrate it in a few hands. Research on genes indicating a propensity to breast cancer is a frequently cited example of the latter problem. Fabienne Orsi and Benjamin Coriat, “Are ‘Strong Patents’ Beneficial to Innovative Activities? Lessons from the Genetic Testing for Breast Cancer Controversies,” Industrial and Corporate Change 14 (2005): 1205–1221. But here, too, anecdote outweighs evidence. Timothy Caulfield, Robert M. Cook-Deegan, F. Scott Kieff, and John P. Walsh, “Evidence and Anecdotes: An Analysis of Human Gene Patenting Controversies,” Nature Biotechnology 24 (2006): 1091–1094. On the other side of this debate is the argument that having intellectual property rights, even on state-funded university research, will facilitate commercialization—allowing the commercial investor to know that it will acquire sufficient rights to exclude others from the innovation. This is the premise behind “Bayh-Dole,” the act (P.L. 96-517, Patent and Trademark Act Amendments of 1980; codified in 35 U.S.C. § 200–212 and implemented by 37 C.F.R. 401) that sets up the framework for technology transfer from state funded university research.

To date, the evidence for the anti-commons effect inside academia has been equivocal, at best. Walsh, Cohen, and Arora found no such effect—but one main reason for the absence of problems appeared to be that scientists were simply flouting the law (or were ignorant of it). John P. Walsh, Ashish Arora, and Wesley M. Cohen, “Effects of Research Tool Patents and Licensing on Biomedical Innovation,” in Patents in the Knowledge-Based Economy, ed. Wesley M. Cohen and Stephen A. Merrill (Washington D.C.: National Academies Press, 2003), 285–340. I would question whether a research system based on massive law-breaking is sustainable, particularly after the U.S. Court of Appeals for the Federal Circuit clarified for us that there effectively is no academic research exemption in U.S. patent law. Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002). The National Research Council’s committee on the subject found few problems now but possible cause for concern in the future. Committee on Intellectual Property Rights in Genomic and Protein Research and Innovation, National Research Council, Reaping the Benefits of Genomic and Proteomic Research: Intellectual Property Rights, Innovation, and Public Health (Washington D.C.: National Academy Press, 2005). A study by the American Academy for the Advancement of Science also reported few problems, though a closer reading revealed that licensing produced delays in research—some of them considerable—but did not cause it to be abandoned. The effects were greatest on industry scientists. American Association for the Advancement of Science, Directorate for Science and Policy Programs, International Intellectual Property Experiences: A Report of Four Countries (Washington, D.C.: AAAS, 2007), available at Fiona Murray and Scott Stern, “Do Formal Intellectual Property Rights Hinder the Free Flow of Scientific Knowledge? An Empirical Test of the Anti-Commons Hypothesis,” Journal of Economic Behavior & Organization 63 (2007): 648–687, found a definite but modest anti-commons effect, restricting further research and publication on patented materials. Similar concerns have been raised about access to scientific data. J. H. Reichman and Paul Uhlir, “A Contractually Reconstructed Research Commons for Scientific Data in a Highly Protectionist Intellectual Property Environment,” Law and Contemporary Problems 66 (2003): 315–462.

What about the opposite question? Are we getting benefits from the process of increasing the use of intellectual property rights in basic university research? The best study of the effects of the current university technology transfer process found little definitive evidence of net benefits and some cause for concern that the traditional role of universities in freely supplying knowledge is being undermined. David Mowery, Richard Nelson, Bhaven Sampat, and Arvids Ziedonis, Ivory Tower and Industrial Innovation: University-Industry Technology Transfer Before and After the Bayh-Dole Act (Palo Alto, Calif.: Stanford Business Press, 2004).

Beyond the questions about the effects of upstream intellectual property rights on basic research lay the much harder questions about the effects of intellectual property rights on the development of technologies. Here there is much evidence that decisions about patent scope are vital and, as Robert Merges and Richard Nelson reveal, that poor decisions can hamper or cripple the development of disruptive technologies. Robert Merges and Richard R. Nelson, “On the Complex Economics of Patent Scope,” Columbia Law Review 90 (1990): 839–916; Suzanne Scotchmer, “Standing on the Shoulders of Giants: Cumulative Research and the Patent Law,” Journal of Economic Perspectives 5 (1991): 29–41. The fear, highlighted in this chapter, is that poor decisions about patent scope and subject matter can inhibit technological change. On the subject of that fear, there is much more evidence. James Bessen and Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (Princeton: N.J.: Princeton University Press, 2008); and Adam Jaffe and Josh Lerner, Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What To Do About It (Princeton, N.J.: Princeton University Press, 2004)." (