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Thomas G. Field, Jr.
Professor of Law Franklin Pierce Law Center
I appreciate being made aware of the SCIENCE forum concerning intellectual property protection for genome innovation. Heller and Eisenberg advance interesting ideas, e.g, an "anticommons", but I am not convinced that we have a problem or that, should one arise, we lack tools adequate to deal with it.
Concern about patenting fundamental knowledge is not new. It is older than even Doll suggests in his companion article. In 1853, in O'Reilly v. Morse, the U.S. Supreme Court invalidated a patent claim. Even now, its reasons are compelling:
It is impossible to misunderstand the extent of this claim. [Professor Morse] claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance. If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For ought that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated -- less liable to get out of order -- less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.
Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. .... The court is of opinion that the claim is too broad, and not warranted by law. [56 U.S. 62, 78-79]
On such bases, claims may be denied in the first instance or struck down after grant. Also, inventions funded at least in part with government money are subject to march-in rights. Finally, privately-funded patents could be subject to eminent domain. However, I find no warrant for singling out any particular class of technology for blanket nonexclusivity. Hence I find this proposition advanced by Heller and Eisenberg especially bothersome: "The goal of end-product development may be better served by making patented research tools widely available on a nonexclusive basis...." I'm not sure how the target would be defined (to include pH meters?) or how nonexclusivity would be achieved. In any event, we should exercise extreme caution in tinkering with incentives to develop new "research tools" however defined.
P.S. People attracted by your forum may be interested to know that over a dozen papers presented at 1993 and 1995 genome innovation conferences are online at WWW.FPLC.EDU/RISK/GENINDX.HTM.
