Capitalizing on New Needs and New Opportunities Government-Industry Partnerships in Biotechnology and Information Technologies (2001) / Chapter Skim
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Panel VI: Intellectual Property and the Public Domain: Sectoral Perspectives
Panel VI: Intellectual Property and the Public Domain: Sectoral Perspectives
Pages 173-190
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From page 173... ...
Goldstein opened the panel by commenting that patents reflect a "grand compromise" in giving inventors incentives to create new technologies which it is hoped will widely benefit society by allowing them to privatize the economic returns of an innovation's benefits. There are questions about what we should privatize, for what length of time privatization should be ensured, and which institutions should benefit from privatization and which should not.
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From page 174... ...
SECTORAL VARIATIONS IN THE ROLE OF INTELLECTUAL PROPERTY Wesley Cohen Carnegie Mellon University Dr. Cohen began by saying that the title of the paper he was going to discuss is "Patents, Public Research, and Implications for Industrial Innovation in the Drug, Biotechnology, Semiconductor, and Computer Industries" and that his coauthor is Dr.
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From page 175... ...
For the four sectors analyzed in his paper, Dr. Cohen said that when asked whether research from universities or government labs suggested an R&D project or contributed to the completion of a project, the positive response was quite high.
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From page 176... ...
Even when considering the relative importance of private versus public channels, Dr. Cohen said that much of public research flows readily to the commercial sector using public channels.
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From page 177... ...
177 Z to Z s ~ o ~ m A_ CO ll z In Q o ll z In o C' o ,C' U' 1 lo .
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From page 178... ...
In biotech and drugs, Bayh-Dole may have the intended effect of promoting innovation by providing the legal framework for exclusive rights to intellectual property. But the importance of public channels in these industries (and public channels dominate private ones)
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From page 179... ...
David Mowery of Berkeley and Richard Nelson of Columbia conducted the first set of Mellon studies on this topic; they examined the University of California at Berkeley, Stanford University, and Columbia University. The second set has looked at Johns Hopkins University, Duke University, and Penn State.
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From page 180... ...
Feldman displayed a table (Table 4) showing measures of the productivity of university research spending, using invention disclosures and licensing revenues as metrics.
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From page 181... ...
Feldman and her colleagues have found that commercializing university technology will involve multiple types of transactions. Multiple licenses for a technology or family of technologies are one approach that universities may employ.
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From page 182... ...
At the time, NRC was conducting a survey of university intellectual property policy, and it was inquiring about the possible participation of personnel from Johns Hopkins in a conference on the topic. The response from the dean of the medical school stated that individuals in the school would neither be interested in patenting innovations that may impact the public health nor participating in the NRC conference.
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From page 183... ...
Dr. Feldman responded affirmatively, noting that at Johns Hopkins approximately 90 percent of the university's intellectual property portfolio is in the biosciences.
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From page 184... ...
The process of discovery in the traditional pharmaceuticals industry involves finding a lead chemical compound that has a desirable biological property and that can be administered orally. Often these chemicals were found by happenstance, and the real science begins when a pharmaceutical chemist optimizes it into a compound that has less toxicity, more activity, and is more biologically available.
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From page 185... ...
The patent laws we have today are superb at protecting final products, but are untested when it comes to patents covering research tools. The problem is very significant because it relates to the most critical technology that we have to benefit human health.
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From page 186... ...
Recent Court Decisions Assuming further that a research tool patent holder has cleared the HatchWaxman hurdle and is in court, problems arise from recent court decisions that apply patent law doctrine developed for the synthetic chemicals industry to biotechnology. Patents in biotechnology typically involve discoveries of things found in nature a DNA sequence for example which are subject to a wide degree of variation in specific applications, and the variations are relatively obvious.
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From page 187... ...
In the meantime, however, Hatch-Waxman will probably protect research you conduct. The patent attorney adds that, in her opinion, the patent is invalid; it involves a doctrine that the courts have yet to address, and in her reading of current trends, she estimates a 60 percent chance that the patent would be defeated in federal circuit court in 15 years.
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From page 188... ...
The patent holder, not wanting a court to possibly invalidate his patent, declines to provide a letter or any evidence to suggest that litigation is likely. Having a patent declared invalid, your patent attorney informs you, does not invoke the already weak reexamination procedures available from the Patent Office.
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From page 189... ...
The NIH has issued guidelines on this, but the legal problems surrounding research tools are greatly straining relations between universities and industry.
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From page 190... ...
190 BIOTECHNOLOGY AND INFORMATION TECHNOLOGIES many invalid patents in software; indeed, Mr. Goldstein said that some software patents may be declared invalid for "obviousness reasons." The Patent Office lacks the manpower and databases to understand the range of products and innovations in software.
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