Myriad Choices: University Patents under the Sun

By Rooksby, Jacob H. | Journal of Law and Education, Spring 2013 | Go to article overview

Myriad Choices: University Patents under the Sun


Rooksby, Jacob H., Journal of Law and Education


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. …

The rest of this article is only available to active members of Questia

Sign up now for a free, 1-day trial and receive full access to:

  • Questia's entire collection
  • Automatic bibliography creation
  • More helpful research tools like notes, citations, and highlights
  • A full archive of books and articles related to this one
  • Ad-free environment

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

Myriad Choices: University Patents under the Sun
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Sign up now to cite pages or passages in MLA, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    For full access in an ad-free environment, sign up now for a FREE, 1-day trial.

    Already a member? Log in now.