IP In Science

Question 1

How has academic patenting evolved in the US?

Answer 1

After a period of dispute about tole of basic research as a source of innovation.
USA was loosing competitiveness.

There was too much science as a public good, not enough innovation/applied research.

1980 Bayh-Dole Act

1. allows universities to retain the title to inventions made under federally-funded program.
2. Allows universities to permit exclusive licenses.

–> BOOM in academic patenting!

Question 2

How does the Bayh-Dole Act contradict the Open science system?

Answer 2

Before:
main form of reward is a moral reward “priority race”
Now:
patents is a form of reward–> decrease access to science: no more a public good.

Question 3

What is the “shelved invention” metaphor and the debate on the BD Act?

Answer 3

Bayh-Dole Act was still based on a linear view of science.
Scientific discovery –> Potential invention –> IPR-based incentives –> develop innovation

Debate:

1. Is Bayh-Dole Act at the origin of academic patenting boom in the US?
2. Have US patents changed nature over the boom?
3. Open Science vs Private Technology
4. 4. Are universities behaving more and more like trolls? Owners of patents that don’t exploit the patent themselves, but blackmail companies that might need the patent.

Question 4

How has academic patenting in Europe evolved?

Answer 4

1. Patent ownership reflects institutional peculiarities of European countries:
   - professor’s privilege. can file patent under her/his name.
   - European universities’ historically lack of financial autonomy.
   - If collaboration with private research organisations, PROs are the ones that file.
2. 10-year trend towards increasing university-ownership, with Bayh-Dole as a policy model.
   - Abolition of professor’s privilege
   - Increasing autonomy of universities
   - Incentivised universities to open Technology Transfer Office.

Government started telling universities to make financial returns on the inventions of the individuals (professors/students).
So the percentage of ownership of academic patents grew to 30% in 2007. Companies –> 60%

In Europe, not necessarily an increase in patents, but a re-shuffling of patent ownership

Question 5

What were the effects of IP on Science?

Answer 5

Does the diffusion of university patenting:

1. Create obstacles to cumulative growth in science
   - Decline of sharing culture (Open Science practices)
   - Increase in academic research costs/obstacles (“anti-commons” hypothesis; blocking patents)
2. Research bias:
   - Shift from basic to applied/specific research targets, for economic benefit in lack of public funding.
   - Patenting vs Publishing trade-off, they may delay publication to avoid killing novelty.

Question 6

What is the Oncomouse patent and what is it an example of?

Answer 6

It is an example of obstacle to cumulative science.

1988, the USPTO grants Harvard 2 patents over the Oncomouse, first animal ever patented.

• > valuable model for screening anti-cancer drugs
• > investigates how tumor forms
• > test potential therapies at a faster rate than if tested on humans

Everyone who wants to develop any animal that is used for testing cancerogenous substances, they have to pay the license

What happened after this very broad patent?
Harvard gave an exclusive license to DuPont for $6M funding.
DuPont doesn’t play by the rules of open science, is very aggressive/not permitting in giving further licenses.
- limits on informal exchange of mice between scientists: stop sharing of bred mice
- Contractual control of scientific disclosure: annual disclosure requirement
- Dupont retained reach-through rights: DuPont retained the property of the results of the licensee’s research.

Many scientists started protesting against DuPont’s.
1995-1999: negotiations between DuPont and the National Institute of Health.
Result:
• general license: NIH-funded academic scientists can use onco-mice for free, for non-commercial research (even if firm-sponsored)
• First example of government-backed solution to IP issues in science

Question 7

What is the Axel patent and what is it an example of ?

Answer 7

It is an example of obstacle to cumulative science.

1980: with public funding from NIH, Axel invents “co-transformation” -> Technique for harnessing mammalian cells’ power to produce proteins made from inserted genes.

It was granted pre- BD Act: NIH retained first rights on results of research it funded.
but:
It allowed Columbia to take the patent, with some licensing conditions:
- License must be Fair Reasonable and Non-discriminatory = FRAND.
- non-exclusive, non-controversial licensing (top biotech companies among licensees,
fair terms for scientific use)

Very successful patent!
Axel patent becomes the “single most successful innovation” in the US university history.
All money was re-invested in research, Axel gets Nobel Price.

Expiration due in 2000, but Columbia:
• filed a continuation application, granted in 2002
• asked its licensees to pay royalties (for 17 additional years!)
• licensees fought back, Columbia gave up in 2005

Patents created the necessity for a great bureaucratic infrastructure, now you must sign: Material Transfer Agreements

Because there is a sphere of people profiting and exploiting licenses, that has increased the cost of exchanging material.

Question 8

Talk about the “Natural Experiment” with patent-paper pairs

Answer 8

“patent-paper” pair: Looked at 340 articles from Nature Biology, out of these 340 there were 169 twin related patents.

Experiment looks at number of citations of the paper, before and after the publication of twin patent.

Showed that when patent comes up, they stop citing the article because they are concerned with the IP.
Possibility that Patents discourages citations for a paper.

Before, the number of citations was linked to quality of paper, later it was linked to effects of patents attached to it.

Question 9

How was the IP on Science effect of Research Bias studied?

Answer 9

Are patents and publications substitutes or complementary?
On top of impeding cumulative research, is it possible that patents push researchers away from basic research and towards more applied research?

Breschi et al. 2007 & 2008, “patenting vs publishing”
Test whether academic INVENTORS, i.e. professors with patents, publish less in basic research journals that professors without patents (CONTROLS).

Stylized facts:

1. Academic inventors publish MORE than non-inventors (they also patent more in basic research)
2. Gap in publishing activity between inventors and non-inventors increases right after the patenting event
3. Patenting go along with publishing and even magnifies Matthew Effect.

Possible explanations:

1. Fixed effect: Academic inventors are more clever than non-inventors
2. Resource effect: academic inventors access more resources through collaboration with industry, of which patenting is a signal. If research in Pasteur’s quadrant, field where basic research is immediately useful for application.
3. Publication delay: academic inventor implies postpone publishing until they patent.

Key results on research bias:
No evidence of Research Bias: no evidence of shift to applied research.
- Find that patenting and publishing are complementary rather than a trade-off.
- Good news for basic research, Bad news for because of Matthew Effect.