How universities handle potentially patentable discoveries made by their faculty reflects important policy decisions that affect the greater public. While few research administrators in higher education would dispute that any university-owned patent should be used for society's benefit, the relationship between patents and the public good may be less apparent to those whose primary familiarity with patents stems from recent news reports of "patent trolls'" and billion-dollar battles in the smartphone industry.2
Yet no matter the staggering financial rewards often at stake with patents, furthering the public good is, at root, the motivating principle behind the government's award of any patent. The U.S. Constitution provides that, "[t]o promote the Progress of Science and useful Arts," Congress has the power to grant inventors "exclusive Right to their . . . Discoveries."3 When a patent is awarded, the public benefits from access to knowledge the inventor otherwise might not have disclosed. In exchange for that disclosure, the federal government awards a period of exclusivity (currently twenty years)4 to the inventor to practice the invention - a substantial carrot believed to spur innovation that helps us all.
As early as 1813, former president Thomas Jefferson - himself an inventor and one of the nation's founding members on the Board of Arts, which served as the nation's first patent examination office5 - acknowledged "the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."6 Implicit in Jefferson's remark is the understanding that not every "invention" should be awarded a patent. Yet the thrust of Congressional action and judicial interpretation in the 20th Century was to embrace an expansive view of the subject matter eligible for patent protection.7 Quoting from the Patent Act's legislative history in a landmark case decided in 1980, the Supreme Court famously declared that "anything under the sun made by man" is eligible for patent protection, assuming the statutory criteria of novelty, utility, and "nonobviousness" are met.8 The decision effectively launched the biotechnology industry and, along with the Bayh-Dole Act of 1 980, hastened the involvement of universities in patenting discoveries made by their faculty and researchers - an activity that has increased substantially in the past decade.9
To be sure, much good has come from these developments. Writing in 2002, The Economist magazine labeled the Bayh-Dole Act "innovation's golden goose,"10 and it is easy to understand why. Recombinant DNA, Coumadin® (a blood thinner), the OncoMouse® (a genetically modified mouse intended for laboratory testing), TrophAmine® (a nutritional support for premature babies), Gatorade®, the Honeycrisp apple, and the Breathalyzer® are some of the many and varied inventions to have benefitted the public and derived from research activities conducted by university scientists." While many of these inventions are or once were protected by patents - which allow universities to license the manufacture and use of inventions to companies in industry - no federal law requires universities to seek patent protection for their researchers' discoveries unless they elect to take title to federally funded inventions.12
Yet increasingly, with a growing emphasis on translational research over basic science research, patent rights drive university research activities under the theory that they are necessary to attract private investment to commercialize inventions with possibly wide application. According to this theory, companies are not interested in translating research findings into marketable products unless patent rights exist to provide them with some expectation of market exclusivity and/or monopoly pricing.11 In turn, the potential to generate revenue through licensing patents can create incentives for universities to license their patents exclusively, which can lead to what amounts to monopolistic control by companies of new drugs, diagnostic tools, or other products of great importance to the public's health and welfare. …