The USPTO's Proposal of a Biological Research Tool Patent Pool Doesn't Hold Water
Iyama, Scott, Stanford Law Review
INTRODUCTION I. AN OVERVIEW OF THE PATENT THICKET PROBLEM A. The Patent Thicket B. The Adverse Effects and Fundamental Causes of a Research Tool Patent Thicket 1. The tragedy of the anticommons 2. The hold-up problem II. PATENT POOLS: THE USPTO'S ANSWER TO THE PROBLEM OF RESEARCH TOOL PATENT THICKETS III. THE USPTO PATENT POOL IS NOT A SOLUTION TO THE PROBLEM OF RESEARCH TOOL PATENT THICKETS A. A Patent Pool Does Not Adequately Address the Root Causes of the Problem of the Anticommons 1. Transaction costs of rights bundling 2. Divergent incentives 3. Ex ante valuations B. A Patent Pool Does Not Solve the Hold-Up Problem IV. ANTITRUST CONCERNS A. Practicalities of Biological Research 1. The evolutionary problem 2. The antitrust implications based on the evolutionary problem B. Distinctions from Other Permissible Patent Pools CONCLUSION
A recent report by the National Institutes of Health (NIH) announced that the granting of intellectual property (IP) rights to research tools (1) "can stifle the broad dissemination of new discoveries and limit future avenues of research and product development." (2) Specifically, IP rights to research tools can limit the viability of particular research scenarios because of the phenomenon known as patent thicketing. (3) Patent thickets arise because of well-distributed and overlapping patent rights. Thus, a given research process will be adversely affected where a would-be investigator encounters difficulty in the assembly of utilization rights for each research tool required for the particular research scheme. (4) To mitigate this problem of patent thicketing, the U.S. Patent and Trademark Office (USPTO) issued a white paper arguing for the creation of a patent pool, composed of biological research tools, to mechanically facilitate a broad licensing scheme of the necessary use rights. (5)
In this Comment, I argue that a patent pool is an inadequate solution to the problem of patent thicketing in the field of biological research tools. Following a background discussion in Part I on the formation of research tool patent thickets and the USPTO white paper, I will attempt in Parts II and III to elucidate the distinct characteristics of biological research in order to demonstrate that the pool's goal of "one stop patent license shopping" is simply not feasible. Specifically, in Part IV, I will show that the uncertain nature of experimental investigation creates fatal impracticalities when one is trying to identify a particular collection of patents to be included in the pool. Then, in Part V, I will argue that, even if a set of patents can be identified for inclusion in a research-tool-based patent pool, the doctrines of antitrust will render its usage impermissible. Thus, this Comment concludes that legislators and agency policymakers should not adhere to the recommendation of the USPTO white paper.
I. AN OVERVIEW OF THE PATENT THICKET PROBLEM
The stated objective of the USPTO white paper is to offer a solution to the patent thicket problem; thus, I will first identify and define the patent thicket problem as applied to biological research tools. To that end, this Part will focus on the development of a patent thicket and its theoretical consequences for biological research.
A. The Patent Thicket
The theory of patent thicketing was first articulated by Carl Shapiro and is premised on the modular concept of scientific research. (6) Science, as an evolutionary process, is predicated upon the developments and theories of preceding scientific generations; thus, modern scientific research can be viewed as being composed of various building blocks. Each block is a past theory, tool, or hypothesis that is utilized in conjunction with other blocks to construct a more inclusive or insightful scientific endeavor. (7)
Under this metaphor, a patent thicket arises when each block is granted separate, yet concurrent, exclusivity rights. …