New Attack on Patenting in The New York Times

    By Kevin E. Noonan --

The New York Times seems to have an unending supply of pundits willing to support its anti-patent agenda, as has been noted on this blog before (see below).  The latest example is an article in this Saturday's paper, entitled "When Academia Puts Profit Ahead of Wonder," by Janet Rae-Dupree.  Once past its precious and naïve title, it evinces the same patent animus and the same degree of ignorance about the issues and the stakes behind them.

The piece is ostensibly about the Bayh-Dole Act, passed under the Carter Administration to permit, for the first time, inventors working in U.S. universities and funded by Federal grant monies to apply for patents on their inventions.  The program is generally accepted to be a success, providing an alternative source of licensing revenue for universities and "the fire of interest" spurring innovation.  But pundits, academic and otherwise, rarely achieve prominence affirming the status quo, and expectedly the success of the Bayh-Dole regime has engendered critics.  The critics' point is that the pursuit of profit has somehow stifled the pursuit of pure science and sullied the motivations of its academic practitioners.

To quote Ms. Rae-Dupree from another context, "Balderdash!"  Unmentioned in the piece is the context under which Bayh-Dole was enacted.  Before patent protection was available, U.S. academic science, funded by U.S. taxpayers, represented unpaid-for research and development for corporations, many of them from abroad.  At least a portion of the American R&D fueled the economic miracle economies of Europe and Asia during the late 1960's and 1970's, unwittingly aiding and abetting competition by these economies for American jobs and technology.  This trend turned around in the 1980's, as Bayh-Dole and the creation of the Court of Appeals for the Federal Circuit strengthened patent protection for U.S. inventors.  The consequence:  a U.S. biotechnology sector that promoted the ascendance of U.S. pharmaceutical companies enjoyed until recently, as well as innovation in the telecommunications and computer fields.  (If there is any doubt about the importance of protecting innovation, recall that twenty years ago everyone had a Walkman and today everyone has an iPod.)

Of more concern than a failure to appreciate these historical facts are the continued misstatements, particularly concerning patent law, that once again grace the pages of the Times.  Quoting Daniel S. Greenberg, another anti-patent pundit, the article asserts that, had the current patent regime existed when Watson and Crick discovered the double helical structure of DNA, they would have tried to patent it.  Like the hyperbole of others (see "Science Fiction in The New York Times"), the statement is not only wrong it is demonstrably wrong:  the double helix, like the relationship between mass and gravity or the fact that water boils at 100°C (at sea level) is an unpatentable phenomenon of nature.

Indeed, Mr. Greenberg proves the converse of one of the arguments inherently advanced by the article:  that somehow "corporate secrecy" has besmirched the heretofore pure pursuit of knowledge.  Prior to the errant speculation that Watson and Crick would have patented the double helix, the article ascribes to him this apocryphal description of how science was done in 1950's England:

When James Watson and Francis Crick were homing in on DNA's double-helix structure in the 1950s, they zealously guarded their work from prying eyes until they could publish their findings, to be certain that they would get the credit for making the discovery.

Similar descriptions have come from Jim Watson himself, in The Double Helix and elsewhere.  Thus, it seems that a due concern for advancing one's own career provided ample motivation for jealously guarding research results very much before the advent of university patenting under Bayh-Dole.

Similarly wrong are the purported consequences of the infiltration of filthy lucre into the ivory towers of academe.  The piece bemoans that "[b]lue sky" research -- the kind of basic experimentation that leads to a greater understanding of how the world works -- has largely been set aside in favor of projects considered to have more immediate market potential."  Perhaps a quick perusal of the grant proposals to the National Institutes of Health or the National Science Foundation would have helped, since these are replete, even today, with exactly this kind of "blue sky" research.  The reason is simple, and well understood by those who actually do the science:  technology is when you know the answer, and the important and exciting work in science comes when you not only don't know the answer, you aren't really sure about the question.  Grant proposals, while needing to convince the funding agency that the proposal has a chance of providing useful information, are not geared towards technological applications; perhaps Ms. Rae-Dupree is confusing this type of grant with applications for Small Business Innovation Research (SBIR) grants, which resemble the types of non-"blue sky" research she mentions.

Also untrue is that "[p]atenting a new basic science technique, or platform technology, puts it out of the reach of graduate students who might have made tremendous progress using it."  Patents are meant to prevent commercial activity, and although there is no "pure research" exemption in patent law, there is a higher law in play:  never sue anyone who doesn't have any money.  It is extremely unlikely that a graduate student, working on a dissertation that is used merely to fulfill the requirements of a degree and perhaps publish a paper in a scientific journal, would ever have need to worry about being sued for patent infringement.  The proof of this state of affairs is that the poster child for the supposed risk of patent infringement, Madey v. Duke University, has never been used to support an infringement action for non-commercial research activities.

Many of the critics cited in the article represent industry, and they recite how the current state of affairs -- where universities can patent their inventions -- has stymied commercial application of these inventions.  This is undoubtedly the case; it is always easier just to take the fruits of another's labor than to pay for them.  Uncritical reproductions of these types of complaints from industry can serve only one purpose, to persuade policymakers to rethink the Bayh-Dole scheme.  While this might be good for those industries who have recently shown disdain for any innovation other than their own, it would not be good for the rest of us.

There are certainly some inefficiencies in the current system that are mentioned in the article, for example that only a few major universities have reaped the greatest benefits of licensing patented technology.  Rather than damning the effort, however, this data merely confirms that invention, and profitable commercial exploitation of invention, is unpredictable, serendipitous and a lot harder than most of us (including, perhaps, some tech transfer managers) contemplate.  The fact is that permitting university patenting over the past quarter century has fostered wide innovation, new products including new drugs and therapies, and promoted U.S. jobs and the economy.  We would be foolish indeed to go back to having U.S. academia let corporations free-ride on the innovations produced as the fruits of their research.

For additional information regarding this and other related topics, please see:

• "New York Times to Innovation: Drop Dead," April 30, 2008
• "The Continuing Assault on Innovation at The New York Times," July 15, 2007
• "The Anti-Patent Beat Goes on at The New York Times," July 1, 2007
• "Science Fiction in The New York Times," February 13, 2007
• "Anti-Patent ("Sullivan?") Malice by The New York Times," January 29, 2007

Comments

[EG]

Kevin,

Consider the source (The New York Times), and it's no wonder you see an article like this one. Rae-Dupree loses sight of Bayh-Dole as being used to stimulate commercialization of technology that would otherwise not happen (as was the sad case before Bayh-Dole). Also, given how many biotech applications filings there are I see no diminishment in biotech research. And as you correctly point out, who is going to sue a professor who has no money to provide damages for?

What I found particularly interesting is the statement by Rae-Dupree that "that fewer than half of the 300 research universities actively seeking patents have managed to break even from technology transfer efforts." Rae-Dupree probably didn't interview someone from the Association of University of Technology Managers (AUTM), but she should have to get her facts straight. As many of these tech transfer offices will tell you, making money is not the only reason for doing tech transfer, and may not even be the primary reason. In fact, Rae-Dupree neglected to mention a prime reason for unversities/non-profit research using Bayh-Dole, namely to help get start up companies underway for those professors who choose (not forced) to be entrepreneurial. And where, pray tell, does Rae-Dupree expect this country to get new business growth if commercialization of technology isn't encouraged, even in our universities/non-profit research organizations?

[Kevin E. Noonan]

Dear EG:

I despair of having any of the anti-patent pundits actually revise their thinking based on the facts - they won't be getting many columns in the Times if they point out the virtues of Bayh-Dole or any other patent-related situation. We are stuck with a Zeitgeist of patent negativity, which is probably just the to-be-expected outcome of the success patenting has become. (On the bright side, maybe GP firms will become less enamored with the area).

Between the academics and pundits, and the complexities of the relationships between innovation, commercialization and patent protection, there will always be room for "informed opinion" that patents are "bad" for us. They will always be wrong, but that doesn't seem to stop inexperienced real estate professors and others from opining, either from their own soap box or in the popular press.

Thanks for the comment.

[M. Slonecker]

Mr. Noonan,

While I do agree that many "facts" asserted by pundits are a bit off the mark (I am prone to understatement), I have dealt extensively with the B-D Act and have noted a disturbing trend wherein several public universities have begun to view research as a profit-making endeavor, and in some instances have assumed a role as an R&D contractor for private sector businesses.

[Lior]

"... it is always easier just to take the fruits of another's labor than to pay for them."

This is a true aphorism, but completely misses the point. Here, the labor was funded by government research grants so the fruits have already been paid for (via taxes) -- there should not be extra new charges for using them.

When a private investor funds research, he is taking a risk. Patents promote disclosure while giving the investor enough potential return to justify a risky investment. Research funded by government grants is different: the taxpayers are taking the risk. The researchers (both the individual researchers and the university) on the other hand are taking very little risk here: the general public is in fact paying the university for its costs via "grant overhead charges"; the researcher will get his salary in any case (part of it from the grant!). Thus, there is no need to "compensate" the university and the researcher for risks they didn't take.

Rather, the people who did take the risks -- the taxpayers -- should get the benefits. The way to do it is to freely disclose the results. Indeed this allows any member of the public, especially existing industry, to use the results without paying more, but this is hardly unfair since they paid the taxes from which the research grants were drawn.

It's true -- public disclosure allows foreigners (who didn't pay taxes) to also benefit from the results. But the common "foreigners are exploiting us" phobia shouldn't prevent a rational understanding of the situation: if government-funded research is so commonly useful to industry then the government is funding the wrong kind of research -- the kind that industry would be happy to fund (and patent) directly -- rather then the basic, higher-risk kind which industry will not fund.

To conclude: there's nothing wrong with government-funded research which is widely and freely disseminated (in fact, this should be a condition of government funding). Then every private enterprise (including foreign enterprise, it's true) is free to build on this basic research. Local industry would still have the advantage because the expertise is local. For example, local industry can more easily hire graduate students from the labs that did the basic research.

If universities want to patent the results of their research, they should pay for it themselves.

[Kevin E. Noonan]

Dear Mr. Slonecker:

I suppose it matters who is in control - provided that the university is still obtaining grant support for basic research, and fulfilling its teaching function, having an entrepreneurial arm isn't such a bad idea. After all, anything that permits the university to be more independent from public support makes the university's mission more immune from ill-conceived public policy (see, the Federal ban on stem cell research funding).

I would agree that there would be cause for concern if the university abjured its primary mission to become solely an R&D contractor. But I don't think that's your point.

Thanks for the comment.

[Kevin E. Noonan]

Dear Lior:

Actually, the public gets the benefits, and exactly the benefit intended - the advance of knowledge. That's true if we are talking about a grant to study diseases or French literature. And knowledge isn't patentable - inventions are.

Bayh-Dole recognizes the effects of the tragedy of the commons - if there is no way to protect an invention, no one will take the risk of commercialization. There is huge gap between a laboratory discovery and a commercial product, and living in a capitalist society that risk is borne by investors.

Now, there are other ways - the government could take title to anything made using grant money, and in some ways they do. All government-supported patents are subject to "march-in" rights, to prevent having inventions in the public interest, such as life-saving drugs, off the market. But we could have a system where the government received title to everything patented that was developed using government funds.

But is that what you want? We don't trust the government to do much (think of health care), and now we should have the government involved in commercial decvelopment of inventions? If a camel is a horse designed by a committee, what would it be if the government was responsible?

Because we're never going to have a system where we each get a check for the inventions developed with government money. What will happen under your scheme is that there will be no protection for these inventions, and the captialists (of the venture or other type) will have no expected ROI that will justify development. We could have the worst of both worlds - overseas companies freely using inventions developed using American taxpayer money, and having us pay them for the privilege of buying the products they have made using our technology (like it was pre-Bayh-Dole), or we can have a system where we use each player in the system to do what it does best: inventors to invent, investors to invest, companies to make products and the rest of us to support basic research, with the added bonus that we get the benefits of research AND promote innovation, jobs and the economy.

Thanks for the comment.

[Tim McCarthy]

I was taught a long time ago that an argument directed at discrediting the source was a suspect way to rebut an assertion with which you disagree. Since Mr. Noonan's entire first paragraph is directed at discrediting the source, not at rebutting the assertion, the rest of his argument, in my view, is suspect. An ad hominem argument may make you feel good, but it does not substitute for facts and logic.

[Kevin E. Noonan]

Dear Tim:

The facts and logic make up the rest of the piece. Please continue to read after the first paragraph.

The attack, insofar as it could be characterized as one, was not ad hominem - if it were, I would have focused on whether or not Ms. Rae-Dupree was competent to write the article. What I was pointing out was that there is a trend in the NYT to write generally unsubstantiated articles having a decidedly anti-patent slant. If the newspaper had written an equivalent amount of pro-patent articles I wouldn't have felt there was a need to point it out. But they haven't.

Finally, the article is clearly opinion and to a degree polemic, and the first paragraph was intended to get the reader's attention. Which it did.

Thanks for the comment.