Facilitating scientific research: Intellectual property rights and the norms of science - A response to Rai and Eisenberg

Northwestern University Law Review

Volumn 95, Issue 2, 2001, Pages 691-705

  Scott Kieff, F ^a  

^a NONE

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EID: 0012236747     PISSN: 00293571     EISSN: None     Source Type: Journal    
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References (84)

1. Arti Kaur Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 NW. U. L. REV. 77 (1999).
2. Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE. L.J. 177 (1987) (exploring the potential negative impact of patent rights on scientific norms in the field of basic biological research) [hereinafter Eisenberg, Proprietary Rights]; see also, e.g., Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017 (1989) [hereinafter Eisenberg, Progress of Science] (exploring an experimental use exemption from patent infringement as a device for alleviating potential negative impact of patent rights on scientific norms in the field of basic biological research); Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 VA. L. REV. 1663 (1996) (offering preliminary observations about the empirical record of the use of patents in the field of basic biological research and recommending a retreat from present government policies of promoting patents in that field); Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998) (arguing that patents can deter innovation in the field of basic biological research).
3. Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE. L.J. 177 (1987) (exploring the potential negative impact of patent rights on scientific norms in the field of basic biological research) [hereinafter Eisenberg, Proprietary Rights]; see also, e.g., Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017 (1989) [hereinafter Eisenberg, Progress of Science] (exploring an experimental use exemption from patent infringement as a device for alleviating potential negative impact of patent rights on scientific norms in the field of basic biological research); Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 VA. L. REV. 1663 (1996) (offering preliminary observations about the empirical record of the use of patents in the field of basic biological research and recommending a retreat from present government policies of promoting patents in that field); Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998) (arguing that patents can deter innovation in the field of basic biological research).
4. Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE. L.J. 177 (1987) (exploring the potential negative impact of patent rights on scientific norms in the field of basic biological research) [hereinafter Eisenberg, Proprietary Rights]; see also, e.g., Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017 (1989) [hereinafter Eisenberg, Progress of Science] (exploring an experimental use exemption from patent infringement as a device for alleviating potential negative impact of patent rights on scientific norms in the field of basic biological research); Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 VA. L. REV. 1663 (1996) (offering preliminary observations about the empirical record of the use of patents in the field of basic biological research and recommending a retreat from present government policies of promoting patents in that field); Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998) (arguing that patents can deter innovation in the field of basic biological research).
5. Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 YALE. L.J. 177 (1987) (exploring the potential negative impact of patent rights on scientific norms in the field of basic biological research) [hereinafter Eisenberg, Proprietary Rights]; see also, e.g., Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REV. 1017 (1989) [hereinafter Eisenberg, Progress of Science] (exploring an experimental use exemption from patent infringement as a device for alleviating potential negative impact of patent rights on scientific norms in the field of basic biological research); Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 VA. L. REV. 1663 (1996) (offering preliminary observations about the empirical record of the use of patents in the field of basic biological research and recommending a retreat from present government policies of promoting patents in that field); Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (1998) (arguing that patents can deter innovation in the field of basic biological research).
6. Eisenberg further recommends various avenues for retreating from strong patent enforcement. See sources cited supra note 2.
7. Rai, supra note 1, at 152.
8. Id. at 88.
9. Id. at 115.
10. Id.
11. Id. at 80.
12. Id. at 152.
13. Id. at 81; see also, e.g., Eisenberg, Proprietary Rights, supra note 2, at 179 n.5.
14. Id. at 81; see also, e.g., Eisenberg, Proprietary Rights, supra note 2, at 179 n.5.
15. Eisenberg, Proprietary Rights, supra note 2, at 179 n.5.
16. See BERNARD BARBER, SCIENCE AND THE SOCIAL ORDER (1953); WARREN O. HAGSTROM, THE SCIENTIFIC COMMUNITY (1965); ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE (1973).
17. See BERNARD BARBER, SCIENCE AND THE SOCIAL ORDER (1953); WARREN O. HAGSTROM, THE SCIENTIFIC COMMUNITY (1965); ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE (1973).
18. See BERNARD BARBER, SCIENCE AND THE SOCIAL ORDER (1953); WARREN O. HAGSTROM, THE SCIENTIFIC COMMUNITY (1965); ROBERT K. MERTON, THE SOCIOLOGY OF SCIENCE (1973).
19. Eisenberg, Proprietary Rights, supra note 2, at 183 (citing MERTON, supra note 12, at 270-77).
20. Id. (citing MERTON, supra note 12, at 270-73).
21. Id. (citing MERTON, supra note 12, at 273-75).
22. Id. (citing MERTON, supra note 12, at 275-77).
23. Id. (citing MERTON, supra note 12, at 277).
24. Rai, supra note 1, at 90-94.
25. Id. at 91 (citing BARBER, supra note 12, at 89-90, 144 and HAGSTROM, supra note 12, at 88).
26. Id. at 92 (citing HAGSTROM, supra note 12, at 13, 23-42, 69-85). Eisenberg also discusses this norm, but she does so in a way that does not expressly identify it as a norm. Eisenberg, Proprietary Rights, supra note 2, at 183-84 (citing MERTON, supra note 12, at 286, 325-27).
27. For purposes of this Essay, the prescriptive norms discussed thus far are not disputed, and so for convenience are referred to collectively as the "consensus set" of prescriptive norms.
28. Rai, supra note 1, at 88.
29. Id. at 90 (citing MERTON, supra note 12, at 273 (discussing the proper behavior of a scientist)).
30. See e.g., JEROME R. RAVETZ, SCIENTIFIC KNOWLEDGE AND ITS SOCIAL PROBLEMS 245 (1996). For more on the market for kudos, see infra notes 34-35, 68 and accompanying text.
31. Id. at 245-72 (reviewing the evolution of socially accepted practices for protecting this form of property in the scientific community including the present method of journal publication and citation thereto).
32. Rai herself recognizes that scientists sought recognition and esteem under the prescriptive norms of the basic biological research community. Rai, supra note 1, at 90.
33. According to Rai, recent changes in patent law caused changes in attitudes towards obtaining patents in basic biological research. Id. at 94.
34. The term "positive law" refers to the set of currently binding statutes, judicial decisions, and administrative rules. The term "normative law" includes accepted and theoretical principles about what those binding statutes, decisions, and rules should be.
35. See generally DONALD S. CHISUM, CRAIG ALLEN NARD, HERBERT F. SCHWARTZ, PAULINE NEWMAN & F. SCOTTKIEFF, PRINCIPLES OF PATENT LAW 729-812 (1998) (reviewing shifts in the positive law of utility and statutory subject matter). In preparation for his confirmation hearing as President Johnson's nominee to the Supreme Court, Thurgood Marshall reportedly responded to a question from a well-known Senator about his views on patents by saying: "I haven't given patents much thought, Senator, because I'm from the Second Circuit and as you know we don't uphold patents in the Second Circuit." Gerald Mossinghoff, The Creation of the Federal Circuit in CHISUM ET AL., supra, at 29-30. Similarly, as Rai recognizes, Justice Jackson noted a "strong passion in this Court for striking down [patents,] so that the only patent that is valid is one which this Court has not been able to get its hands on." Rai, supra note 1, at 102 n.133 (quoting Jurgenson v. Otsby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting)).
36. RAVETZ, supra note 24, at 30-68.
37. Id. at 30.
38. Id.; see also MARSHALL S. SHAPO, A NATION OF GUINEA PIGS 7 (1979) (noting enormous growth in the number of scientists by 1979 and reporting an estimate "that about 85 percent of all the scientists who ever lived" were living at that time).
39. Id.; see also MARSHALL S. SHAPO, A NATION OF GUINEA PIGS 7 (1979) (noting enormous growth in the number of scientists by 1979 and reporting an estimate "that about 85 percent of all the scientists who ever lived" were living at that time).
40. RAVETZ, supra note 24, at 30.
41. Id. Kudos can take many forms, including publication in prestigious journals, citation by peers, general prestige, the award of research grants, academic appointments and tenure, and salary. Id. at 245-72 (reviewing the evolution of the forms of kudos in the scientific community).
42. While kudos can function as a form of property, the markets for kudos differ from markets for other forms of property in important respects. Markets for kudos are especially complex, and while markets for kudos do involve transfers of money, such transfers in the kudos markets often do not involve ordinary market prices. As discussed below, markets for kudos are likely to have a greater propensity for failure than markets for other forms of property. See infra notes 68-69 and accompanying text.
43. See Robert D. Cooter, Decentralized Law for a Complex Economy: The Structural Approach to Adjudicating the New Law Merchant, 144 U. PA. L. REV. 1643, 1656-57 (1996) (contrasting use of the word norm to refer to an obligation rather than to a regularity in behavior).
44. For example, an individual's desire to be liked by the community may motivate individuals to behave in accordance with the prescriptive norms of the community. See Robert C. Ellickson, Law and Economics Discovers Social Norms, 27 J. LEGAL STUD. 537 (1998) (arguing that founders of classical law and economics implicitly placed too much stress on an individual's hunger for material, as opposed to status, rewards).
45. This hypothetical case is also useful for fully evaluating the relative performance of a state of the world in which patents are available in the basic biological research community and one in which they are not. See infra note 65 and accompanying text.
46. See generally OFFICE OF TECHNOLOGY ASSESSMENT, BIOTECHNOLOGY IN A GLOBAL ECONOMY 1-33 (U.S. Government Printing Office, OTA-BA-495, Washington, DC, 1991) [hereinafter BIOTECHNOLOGY IN A GLOBAL ECONOMY] (reviewing changes in biotechnology, defined to be only the "new biotechnology," which refers to the recombinant DNA, cell fusion, and bio-processing techniques that did not come into regular use until around 1980, or thereafter); see also infra notes 54-59 and accompanying text.
47. For a proper comparison, the set of prescriptive norms discussed by critics of the patent system is assumed to be a constant, shared by both states of the world. The set of descriptive norms discussed above is also assumed to be a constant, shared by both states of the world. The relevant inquiry, then, is not whether a patent system has problems, but rather how it compares to other available alternative institutions. See Harold Demsetz, Information and Efficiency: Another Viewpoint, 12 J.L. & Econ. 1, 14 (1969) (critiquing the so-called nirvana approach to institution analysis in favor of a comparative institution approach).
48. Rai, supra note 1, at 96-97.
49. F. Scott Kieff, Property Rights and Property Rules for Commercializing Inventions, 85 MINN. L. REV. 101.
50. An entitlement enjoys the protection of a property rule if the law condones its surrender only through voluntary exchange. The holder of such an entitlement is allowed to enjoin infringement. An entitlement has the lesser protection of a liability rule if it can be lost lawfully to anyone willing to pay some court-determined compensation. The holder of such an entitlement is only entitled to damages caused by infringement. See Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral, 85 HARV. L. REV. 1089 (1972); see also Jules L. Coleman & Jody Kraus, Rethinking the Theory of Legal Rights, 95 YALE. L.J. 1335 (1986).
51. An entitlement enjoys the protection of a property rule if the law condones its surrender only through voluntary exchange. The holder of such an entitlement is allowed to enjoin infringement. An entitlement has the lesser protection of a liability rule if it can be lost lawfully to anyone willing to pay some court-determined compensation. The holder of such an entitlement is only entitled to damages caused by infringement. See Guido Calabresi & A. Douglas Melamed, Property Rules, Liability Rules, and Inalienability: One View of the Cathedral, 85 HARV. L. REV. 1089 (1972); see also Jules L. Coleman & Jody Kraus, Rethinking the Theory of Legal Rights, 95 YALE. L.J. 1335 (1986).
52. See Kieff, supra note 42, at 111-16 (showing how a patent right to exclude those who have not shared in the commercialization costs provides incentives for the patentee and other players in the complex process of technological progress to come together and incur such commercialization costs, thereby facilitating the social ordering and bargaining around inventions that are necessary to generate output in the form of information about invention, a product of the invention, or a useful embodiment of the invention).
53. Id. at 136-40 (showing how the potential infringements induced by a liability rule will discourage investment in the commercialization process ex ante and may even result in a net destruction of social wealth if the collective costs of entry and exit across infringers exceeds the social surplus otherwise created by the invention).
54. Id. at 131-36 (showing how the patent system's facilitation of tie-ins and other forms of price discrimination where technological and economic factors alone might prevent price discrimination provides incentives for the patentee to elect to keep output at competitive levels).
55. Id. at 105 n.9 (collecting sources of criticism of present patentable subject matter); see also Rai, supra note 1, at 100-09 (criticizing the change in positive patent law regarding patentable subject matter).
56. Kieff, supra note 42, at 128-30, 151-52. Average cost per unit of output includes both a pro rata share of total fixed costs, like the costs of building a factory, and marginal costs, which are the incremental costs of inputs like raw materials and labor that are needed to make each unit of output.
57. Id.
58. See Rai, supra note 1, at 126-29 (citing Heller & Eisenberg, supra note 2). ESTs are only small fragments of full-length genes. They are not usually useful in making the product that is encoded by the gene and instead are often used as tags, or markers, to identify whether a particular gene is present. Typically, the full-length gene, or a substantial portion of it, is needed to make the product encoded by that gene. For most pieces of DNA, their biological significance is due mostly to the product they encode.
59. See Kieff, supra note 42, at 126-27 (noting that if the patentee attempts to argue that the claim to the smaller fragment covers the fragment within the environment of the larger DNA, then the claim is likely to be held invalid over the prior art or for lack of adequate disclosure because to be valid, the claimed subject matter must be new and nonobvious, and the patent application must disclose the metes and bounds of the claimed subject matter with physical and chemical detail as well as how to make and use it; and alternatively pointing out that since ESTs exist in nature in the company of the other DNA of the genome, a typical EST claim must be limited in order to overcome this prior art to a version of the EST in some specific environment other than its natural one, such as isolated from all other DNA or inserted into an artificially engineered piece of DNA, and the details of the degree of isolation or of the engineered piece of DNA must also be provided so as to satisfy the disclosure requirements).
60. Id. at 141-51 (reviewing writings of the framers of the present patent system and showing the importance of the commercialization view of patents to the design of the system).
61. See Ian Cockbum et al., Pharmaceutical and Biotechnology, in U.S. INDUSTRY IN 2000 STUDIES IN COMPETITIVE PERFORMANCE 389-92 (David C. Mowery ed., 1999) (reviewing relative performance of the United States biotechnology industry).
62. See BIOTECHNOLOGY IN A GLOBAL ECONOMY, supra note 39, at 163.
63. Id. at 164 (noting that despite growth in Federal Government funding for research and development since 1980, only since 1980 has industry spent more than the Federal Government on research and development).
64. See Cockbum, supra note 53, at 390-92.
65. Id. at 392-95.
66. See Europe Lags Behind in Biotech Commercialization?, BIOTECH. BUS. NEWS, Jan. 17, 1992; see also Reid Adler, Genome Research: Fulfilling the Public's Expectations for Knowledge and Commercialization, 257 SCIENCE 908, 909 (1992) (noting that the United States biotechnology industry is critically dependent on patent protection to maintain its leadership in world markets).
67. See Europe Lags Behind in Biotech Commercialization?, BIOTECH. BUS. NEWS, Jan. 17, 1992; see also Reid Adler, Genome Research: Fulfilling the Public's Expectations for Knowledge and Commercialization, 257 SCIENCE 908, 909 (1992) (noting that the United States biotechnology industry is critically dependent on patent protection to maintain its leadership in world markets).
68. Commercialization of Academic Biomedical Research: Hearings Before the Subcomm. on Investigations and Oversight and the Subcomm. on Science, Research and Technology of the House Comm. on Science and Technology, 97th Cong. 79 (1981) (testimony of Dr. William Raub).
69. Rai, supra note 1, at 120-29.
70. Id.; see also, e.g., Eisenberg, Progress of Science, supra note 2.
71. Rai, supra note 1, at 124 (citing Eisenberg, Progress of Science, supra note 2, at 1057-61).
72. Id.
73. Citation analysis as a measure of kudos is not limited to science. Indeed, it is a topic of great interest to communities in other disciplines, including law. See, e.g., Symposium, Trends in Legal Citations and Scholarship, 71 CHI.-KENT L. REV. 743 (1996).
74. See supra note 38 and accompanying text.
75. Rai's example is discussed supra at note 62 and accompanying text.
76. Rai, supra note 1, at 126.
77. See RAVETZ, supra note 24, at 30 (describing the market for scientific credit as one in which power to give desired credit is concentrated in small numbers of the most prestigious individuals and institutions).
78. See supra notes 53-59 and accompanying text.
79. Rai, supra note 1, at 126-29 (citing Heller & Eisenberg, supra note 2).
80. See Kieff, supra note 42, at 122-26 (noting that entire industries have come and gone using scores of patented inputs and that even in the specific case of the basic biological research community, scientists routinely use a variety of patented machines, reagents, and equipment in the ordinary course of research; and pointing out that this argument also goes too far and would require that members of the basic biological research community should not have to pay the licensing fee for too many other patented inputs, including, for example, the intermittent windshield wiper subsystems on the cars they drive to the laboratory in the morning).
81. Rai, supra note 1, at 112-13 (describing practices); id. at 145 (noting practices to be efficient).
82. These metal plaques implanted in the sidewalks usually state that the real estate is the property of a private landowner and that permission is granted for members of the public to make limited use of it, but that such permission is revocable at the sole discretion of the owner. The assertion of ownership combined with a grant of permission prevents anyone else from acquiring title through adverse possession or an easement by prescription. All of this is accomplished without costly and obtrusive fences, thereby leaving the thoroughfares of a very crowded city relatively open to the flow of pedestrian traffic.
83. See Robert Langreth & Bob Davis, Press Briefing Set Off Rout in Biotech, WALL ST. J., Mar. 16, 2000, at A19 (reviewing aftermath of announcements by the President of the United States and the Prime Minister of England that stock markets understood to be signals that both countries would not allow patents on the results of the human genome project); see also Robert Langreth & Ralph T. King Jr., Biotechnology, Genomics Stocks Plunge on Fear U.S. May Curb Gene-Data Sales, WALL ST. J., Mar. 15, 2000, at A3 (reporting announcement and initial market reaction).
84. See Robert Langreth & Bob Davis, Press Briefing Set Off Rout in Biotech, WALL ST. J., Mar. 16, 2000, at A19 (reviewing aftermath of announcements by the President of the United States and the Prime Minister of England that stock markets understood to be signals that both countries would not allow patents on the results of the human genome project); see also Robert Langreth & Ralph T. King Jr., Biotechnology, Genomics Stocks Plunge on Fear U.S. May Curb Gene-Data Sales, WALL ST. J., Mar. 15, 2000, at A3 (reporting announcement and initial market reaction).