License To Green
Can we have clean energy and patents, too?
Also from the Climate Desk: Michael Shellenberger and Ted Nordhaus argue that patents won't matter in the clean-energy revolution.
Under Bayh-Dole, the agencies that distribute research grants (like the National Science Foundation and Department of Energy) can only limit patent rights under "exceptional circumstances," as determined through procedures so elaborate that they have only been satisfied once. What if this burden were reversed, so that it took exceptional circumstances for an exclusive patent license to be allowed in the first place? New drug development, for example, might meet the requirement, since it takes a huge investment of resources to bring a pharmaceutical product to market. But other technologies—like a new battery design or better solar cell materials—wouldn't get the special patent rights.
The people who run the university technology transfer offices—that is to say, the people who actually do the patenting—are strongly in favor of keeping the law the way it is. They argue that Bayh-Dole helps get university inventions out of the lab so that people can actually use them. But a huge number of technologies have been commercialized out of federally funded research without the need of patents. Think of the computer—or search engines. Furthermore, the licensing deals negotiated by university staff are focused on raising revenue, not increasing public access: a recent study by professor Jay Kesan found that "university technology transfer activities continue to be predominantly patent-centric and revenue-driven with a single-minded focus on generating licensing income and obtaining reimbursement for legal expenses." While each university hopes to be among the lucky few who hit the jackpot with a blockbuster patent, few actually succeed in generating more income than they pay out in legal fees, so current Bayh-Dole practices seem to benefit neither universities nor the public.
Amending Bayh-Dole would be the best way to show developing countries that the United States is serious about helping them go green. But agencies like the National Science Foundation and Department of Energy don't have to wait for Congress. They can begin to make a partial fix on their own. Although they do not have authority to declare certain technologies off-limits to patenting, agencies can nudge universities toward change by making patent practices one of the factors considered when they distribute grant money.
For example, researchers who want National Science Foundation grants must already show how their work will benefit society. The list of examples (PDF) of how to satisfy this requirement includes sharing data publicly or presenting research results to nonscientists; it would be easy to add examples of access-oriented licensing to this list. Agencies could also ask universities to set up "responsible patenting policies" in addition to the conflict-of-interest policies that are already required. Forcing universities to put their policies on paper—and giving students, alums, and the public the opportunity to evaluate them—could go far toward aligning university practices with the goals of the Bayh-Dole Act.
The researchers who are developing groundbreaking green technologies spend much of their time writing grant applications. If their success in winning a grant depends in part on their willingness to forgo a patent, they would care a lot more about what their technology transfer offices actually do. Researchers would have an incentive not only to invent fabulous new things, but also to serve the public interest by opening up access to developing countries. And wouldn't that make China and India happy?
This story was produced by Slate for the Climate Desk collaboration.
Lisa Larrimore Ouellette has a Ph.D. in physics and is a student fellow at the Information Society Project at Yale Law School. This piece is adapted from her comment in the May issue of theYale Law Journal: "Addressing the Green Patent Global Deadlock Through Bayh-Dole Reform." 119 YALE L.J. 1727 (forthcoming 2010).