Intellectual Property and Responsibility

Index Page 2 Introduction Page 3 The debate over IP (Intellectual Property) Page 6 Patent terms as constraints Page 8 The open source model Page 12 The problem of responsibility Page 15 The patent as a scientific goal

Introduction Professor Mario Biagioli is a Distinguished Professor of Law and Science and Technology Studies (STS), and Director of the new Center for Innovation Studies at University of California, Davis. To quote the website the Innovation studies center’s research “engages the many dimensions of the process of technoscientific innovation, from those that make it possible to those that constrain it. We focus predominantly on the upstream spectrum of innovation - from the design, articulation, and funding of research programs to the patenting and publication of their outcomes - paying particular attention to the process, practices, instruments, and techniques of innovation and to the conceptual and practical problems of knowledge transfer�. At the law school, he teaches courses on intellectual property in science, and on the history and philosophy of intellectual property.

Professor Biagioli was kind enough to dedicate some of his time to the Foundation in the form of a conversation with Jonny Hankins. Topics covered were varied, but the major theme running through the discussion is responsibility in the patenting process. Many extremely interesting points came up, from how to lessen constraints on scientific research brought about by Intellectual Property and patent enforcement, to possible shifting goals and objectives in University and private research, and how to define and measure the responsibility implied in the taking or granting of a patent.

What follows is a transcription of the conversation.

2

The Debate Over IP (Intellectual Property) MarioBiagioli. I think I should say something about the state of the debate over Intellectual Property (or IP), just to frame things. Among progressive commentators on intellectual property, by progressive commentators I mean people like Larry Lessig , James Boyle and Peter Jazsi and various others, there has been a sustained discussion about how to conceptualize but also almost visualize the large-scale implications of IP protection, to make sure that people who rely on intellectual property come to understand the impact that IP protection is going to have on future knowledge producers, writers, artists and so on. Their argument is quite interesting because it draws on the vocabulary of the environmental movement. Boyle for instance argues that before the development of environmentalism, people conceptualized the impact of development, (industrial development, housing development and so on), in terms of economic models, but those models did not have a way to account or literally to visualize, to represent and give immediacy to environmental costs.

So the standard argument would be you go to the gas station and pay to fill up the tank of your car, but while the cash transaction between you and the oil company accurately represents your purchase of gas, it does not take into account the environmental cost produced by the pollution that you will produce as a result of driving. The environmental cost - the cost of your activities to people and things that are not part to your purchase of gas - is not represented within the transaction, and that is what economists called an externality, a negative externality in this case.

The point that people like Boyle and Lessig have made is that what the environmentalists did was to make people realize that the environment was not represented by those models and in the policies that followed from them, that nobody was accounting for the environment in the context of these transactions, but that instead it needed to be factored in, and

3

prominently so. The environment that used to be effectively just a kind of shadow entity in the context of economic models has become the thing that we all agree that needs to be protected.

They now say very much the same thing about intellectual property. We should think of culture as something like the environment, so when we patent inventions or we copyright our work, effectively we are developing a certain part of the cultural environment, and we need to make sure that we leave enough of it undeveloped, so that future knowledge and artistic and cultural production can take place.

Now at least there is a vocabulary to talk about responsibility in intellectual property, and it is a vocabulary very similar to that of environmentalism. We basically need to think in terms of impact statements. If you build a dam you will have to provide an impact statement of the dam on the environment, and the tendency now in progressive IP discourse is that we need to do the same thing. We should assess the impact of IP protection on the public domain before we apply intellectual property protection because effectively every time we do that we are taking out a piece of nature – a piece of the public domain -- and “developing” it.

What intrigues me about this is that responsibility is often a very murky notion, but that the environmental framing of IP clarifies it a bit, maybe just a little bit. It is often difficult to figure out exactly what one is responsible for and to whom or what, or even to define responsibility as a concept. So the new discourse of IP and these analogies it develops between the public domain and the environment are important and useful because they at least provide a vocabulary to talk about responsibility. What I think remains a completely open question is how can you quantify that responsibility? What kind of matrix can you use? To play on the analogy of the environment you might say “well if I develop a certain housing project here I should create a certain number of acres of wetland to offset the impact”. It is not clear what the analogue would be in the case of IP. Can we come up with something

4

like a “carbon footprint” analog for IP? I don’t think that you can…

Jonny Hankins. Free something in return?

M.B. Well it is a different kind of object. Mostly we think of damage to the environment in terms of the quantity of pollutants that are dumped or the acreage, surface, of the land that gets developed and taken away from nature for good, but in the case of IP the damage is related to time. I don’t think it’s so much about how much text or how many inventions you patent; it is more about how long you keep those texts and inventions out of the free reach of other people. Because that is the nature of the constraint that IP poses to creativity. The constraints that are produced are about the fact that once something has been patented it cannot be touched or copied for 20 years. Environmental metaphors make you think in terms of shielding land from development or limiting the flow of pollutants into the environment, but that’s not the right response to the damage that IP does to the public domain because it doesn’t involve pollutants. You can say that there’s an awful lot of bad literature, art, film, scholarship, and science out there that’s stinking up our cultural environment, but I don’t think you can blame IP for that. IP doesn’t pollute the public domain -- it chokes it by making it private. And while once you have developed or industrialized a piece of land it is pretty difficult and very costly and time consuming to bring it back to natural park quality, as soon as you make patents or copyrighted work publicly available and useable, the damage, so to speak, is gone. They go back into the public domain instantly. So I really don’t think that protecting the public domain is like protecting nature or the environment.

5

Patent Terms as Constraints J.H. Do you think that it would lessen the constraints if the length of patent terms were shortened?

M.B. Certainly, even if you agree that some level of IP is necessary, and I am an agnostic on that. I don’t have demonstrative arguments against it but I don’t have terribly good arguments in favour either. So if you set aside that big question about the general legitimacy of IP and just say OK we have an IP system, would reducing the terms of protection help? I’d say, yes, for sure. I think that a lot of the critics of IP but also a lot of innovators and culture producers would be quite happy if the terms were reduced, especially in the case of copyright where now they can be for over a century, and that seems harsh.

J.H. Well if we look at the things that might have been copyrighted for a century 100 years ago the view-points were different. We might think that it doesn’t make sense to copyright something for a century now, because in 5 years time many things will more that probably be obsolete.

M.B. Definitely, but there’s a lot of resistance to that argument. There has been the Eldred case at the US Supreme Court where Eldred and various legal scholars that supported his case argue that this steady increase in the terms of copyright protection is effectively turning copyright into perpetual property while the Constitution says very clearly that exclusive rights for authors and inventors have to be limited in time. But the Supreme Court didn’t agree with them, so Hollywood, the music industry, and media conglomerates are happy.

To go back to the question of responsibility, in a sense the length of the term of protection is really the core of the cost that IP imposes on the public, and therefore that is where the discussion of responsibility should focus. And switching from copyright to patents, in some industries there is awareness

6

that patent protection could be shorter, because of the pace of technological development, or at least that the length of the term should be industry-specific. So for instance a kind of industry that is very interested in long patent terms and actually would be very happy to have them extended is the pharmaceutical industry. Their argument is that because they need to invest billions to come up with one successful drug they need to go through thousands of potential leads that don’t go anywhere, so the development costs are represented as enormous. Some people question the accounting that generates those figures, but the logic is that you invest so much, and come up, if you are lucky, with one molecule with good therapeutic value. Then they need to recover all their research costs through that single patent, and so they argue that they need all the 20 years that the law gives them and perhaps more.

J.H. Well in many cases they do in effect get more M.B. Yes there are some creative tricks to extend them. But on the other hand the software industry feels differently and at least some of it claims that patent protection for 20 years is not needed. Very few pieces of software maintain value for 20 years. Also, just one piece of software may entail hundreds of functions, each of which could be potentially patented. So they say they would have to patent a lot of functions which would cost a lot of money and time for a period of protection that would probably last longer than they need. So paradoxically the software industry is not a great friend of patent law, showing that there’s no simple equation between innovation and intellectual property.

7

The Open Source Model J.H. Well open source has really grown out of that position hasn’t it?

M.B. Yes, open source, I believe is a real success story, also because it is not just open source and free software. That model now has been taken up by creative commons and initiatives like that, so basically it is a model that can be applied to anything that can be copyrighted. It is no longer just software, it can be music, texts, art, whatever. And so that is a very successful model which in many ways reframes the discussion of responsibility because most people would that say that you are not really imposing any constraints or costs on other producers or on society at large … Well the only constraint that you impose on the users is that you are telling them that if they want to use, say, your text they are free to do so, in most case even commercial uses are allowed, but it has to remain open under the same conditions that they have taken it from you, In a sense the person who puts a work out under creative commons, free software or open source license puts constraints on the users, but they are constraints about keeping the work open, so most people would say that actually that is really not a constraint at all. Nobody’s property rights are violated, and nobody forces you to use anything you don’t want to use.

I think that the success of the open source model is something that has taken people by surprise. I don’t think that even 10 years ago people would have imagined that it would have spread so fast and wide. One of the great limitations of the model, though, is that it really does not work for patented inventions. It works OK with tangible property – think about the privately supported land banks and nature reserves you see in the US – but only as a preservation tool. Instead when you use it in copyright-based creative practices the free software model preserves the public domain and allows for the development of more culture at the same time. Pretty neat.

8

The constraints that patents and tangible property pose to knowledge and cultural production are tougher to work around. Take for example the large empirical study that was done by Wesley Cohen, Ashish Arora and others based on interviews with hundreds of scientists, asking them if they had encountered constraints in their work as the results of patents.

In the past there used to be a doctrine called ‘research exemption’, something like the equivalent of fair use for patents. Certain unlicensed uses of patented inventions were considered legal if they were done for noncommercial research. So if you were an academic scientist you could copy a patented invention just for your own research purposes. This came to an end, however, because while universities continue to be not for profit, they do a lot of their research in collaboration with or for the private sector, so if a scientist copies an invention for their research it is possible that that research might be commercially motivated or may end up producing commercially valuable results. That has eroded the justification for the research exemption.

So Wes Cohen and his collaborators studied the impact of this, and the picture is quite interesting. A number of scientists did report constraints posed by patents and that in a few cases they had to drop their research projects altogether because they could not get the appropriate licenses to use patented inventions, but this happened less frequently than people expected. The reason, however, was not that patents were not that constraining, but that a lot of scientists reported that they just didn’t care! They just go ahead and infringe and say, well if you want to sue me go ahead! The other surprising result of their study was that a lot of scientist who dropped their research projects did so not because of patent constraints but because they could not convince a colleague to share a reagent or cell line. The problem was their inability to get certain very specific things, not intellectual property licenses. If the scientist said no, the scientist who was doing the asking would have great difficulty in reproducing that thing, otherwise she would not have asked. So if I ask you to

9

license your patent to me for free, and you say no, I have the option of infringing and then see if you sue me. If instead I say I need your unique cell line and you say no, I’m stuck.

So while IP is often presented as a constraint to academic research because it produces what Eisenberg and Heller call “anticommons,” good old tangible property may be as much of a problem. Unfortunately neither problem can easily solved through the creative commons or open source model based on copyright because of the much higher costs involved. It is cheap to register copyright but expensive to obtain and maintain patents, which makes it very, very difficult to develop a patent commons. (You may have heard of patent pools, but they are a very different thing). And even assuming that scientists would be willing to share their most prized reagents and cell lines, setting up a physical publicly accessible depository for such things would be neither cheap nor simple.

I’m not saying it’s impossible, though. Foundations could play a key role in this. Think about the OpenCourseWare Project at MIT where they make their syllabi of all their courses open, including the readings. The initial phase was funded not by MIT itself but the Hewlett and Mellon foundations, and the programs still continues with donations from private corporations and foundations. I don’t know whether, along the same lines, the private sector and the philanthropic world could jump in to key technologies and create this open patent commons. Anyway I am just thinking aloud, I don’t know whether it would be feasible or sustainable. It would probably depend on how big a patent commons it would have to be to make a difference in that specific field, or whether it could be set up quickly before the private sector comes in and starts taking out key patents, leaving only the spoils for a possible patent commons.

I have digressed a bit but now at least we have a better sense of the many different ways in which one can talk about responsibility in IP. We may be able to conceptualize what responsibility means in IP through Boyle’s environmental

10

metaphors, but I think that the metrics for assessing that responsibility would have to be mostly developed by thinking about IP as a temporal, rather than a purely spatialenvironmental set of practices.

That would be very complicated, but also extremely timely and relevant. I cannot think of a lot of contributions within the range of scholars and intellectuals more relevant than a framework for responsibility in the knowledge economy.

11

The Problem of Responsibility J.H. The Bassetti Foundation has been debating the problem of responsibility within innovation for more than 10 years, long debates about how responsibility can be ascribed to individuals, to technology. Can you ascribe responsibility to technology itself? I would say not. To whom then? The researcher, to the person who builds it? To the politician who raises the money and pays for someone to do it? It is an endless question, what is responsibility and who takes that responsibility?

M.B. Certainly who or what is responsible for what and to whom and is a big question, and now that STS has rediscovered the material agency of things, it is possible to think about things having responsibility in ways that go beyond old technological determinism. As far as I can tell that has not yet happened, though. A lot of STS literature is happy to talk about the agency of things, the contribution of nonhuman agents to the construction of certain assemblages, but not so much about the kind of responsibility that goes with that agency. I can’t come up, on the spot, with an explanation for that. But if by responsibility in innovation you mean the responsibility for turning innovation into a legal object and a bundle of property rights – the kind of thing you do when you patent an invention – then I think that the question of how you assess or perhaps quantify responsibility is more urgent that determining the location of that responsibility. Think about an insurance scheme, you pay X amount of money and the insurance company will cover you for certain things up to a certain amount of money. The riskier the things you do, the higher your premium will be. The premium you pay and the coverage you get are indexes of how responsible or irresponsible you are and what responsibility the insurance companies assumes toward you. But if you come up with a scientific discovery or invention and you patent it, what is the social cost of your action? You can quantify how valuable that patent was to you by looking at the revenue from its use and licensing over the period that you held that patent, but not

12

what that patent’s cost to society was – the social costs of preventing other people from using and producing more innovations from it. We don’t have actuarial tables for that.

That is an extremely complicated question but I think a fundamental one if we want to develop a policy about responsibility in IP. Again just thinking aloud, time would have to be a big factor in that assessment, the length of the term of protection, but also how upstream or downstream that invention is located within the stream of innovation so as to assess how much innovation was precluded by the protection of the invention over the life of the patent.

Suppose that you come up with a unique instrument that is just for you to measure something only you want to measure.

Well, even if you patent it you are not going to exclude a lot of people because your invention is extremely specialized. But suppose you come up with a new instrument that could be of use to a variety of scientific disciplines, then the social cost of the patent would be much higher.

But I would not be surprised if that question could be answered only a posteriori and, even then, only partially.

We don’t know what developments a certain patent would preclude at the time it was patented because that would be like predicting the future.

All we can do (and it’s not clear we can do that well either) is to assess post facto, working like historians, which innovations were indeed foreclosed by the presence of that given patent. If we can come up with some assessment of responsibility, it would most likely be of past responsibility – of the effects that a patent had, not the responsibility it will have.

Innovation is emergent which means that you cannot have a notion of ethics or responsibility based on first principles because things change all the time, and in ways that are inherently unpredictable. That’s what I think I was trying to convey earlier when I was saying that it will be extremely difficult to develop a framework for responsibility in IP. In a strict sense, that task is impossible rather than simply difficult.

We can’t assess responsibility a priori. At the same time, we can probably map out the contours of such a framework, and use it to make local, time-specific assessments. It is an

13

interesting question and I thank you for bringing it up. I hadn’t realized that in intellectual property we now have a vocabulary to talk about responsibility, but there isn’t much of a discussion about exactly what authors and inventors should be responsible for, and that is a very interesting question, which of course I cannot answer…(laughter)

14

The patent as a scientific goal J.H. Well we are not really here for answers are we? I have a rather critical question for you, would you agree that in certain circles the goal of science has become the patent? This question refers amongst other things to a book that I recently reviewed on the website, Deadly Monopolies by Harriet Washington, not about science in general in this case but medicine, and it feeds back into what you said before about patents being so long.

M.B. I am not a friend of the pharmaceutical industry and find their lobbying for even stronger patent protection problematic.

That said, there is a point to be made about the fact that secrecy can be as deleterious as commercial monopoly.

There is a huge amount of scientific research carried out in the private sector and some of it (maybe much of it, we don’t know) is not patented but kept as trade secrets. People who believe that academic science should be in the service of the public interest complain that more and more knowledge is being privatized through patents, but people who like the patent system will tell you that patents serve the public because they amount to publications, as opposed to trade secrets that are never disclosed. This is of course a selfserving argument, but it follows a certain logic.

Companies and individuals are entitled to keep their technoscientific knowledge secret, and they often do. But patents will at least provide the public with a disclosure of the invention as part of the application process. 20 years later the patent goes back into the public domain, but even before that you can read its description and use it for your own innovations, provided they are significantly different. Pro patent people would even say that patenting spurs innovation by telling you what you need to invent around. Patents should be seen as publications with a delayed effect so to speak.

That is the discourse of patent supporters but it is also the original logic of patent law based on an exchange between the inventor and the public. The public through elected

15

officials and the government, grants the inventor the patent, but in exchange the inventor has to communicate the knowledge of the invention to the public. In sum, patents can be seen as tools for commercial monopoly, but not for secrecy. They don’t let you copy the invention, but they tell you what it is about.

They are not normal scientific publications, but they are some kind of publications nevertheless. So in this sense the opposition between science and patenting is not absolutely sharp But to go back to your question, yes in some cases patenting is or is becoming a main goal of scientific research. Things are particularly complicated in the context of the university where until a few decades ago patents were seen as inappropriate to the general mission of the institution. In the past (at least in the US) a lot of the research universities would pass their patents to a consortium. They wouldn’t even handle them.

But now, because of the crisis of public funding of the public universities such as we see in California, administrators make the argument that the university needs to patent to generate revenue to make up for the money the state does not provide anymore (and perhaps will never provide again). So paradoxically there is almost this Thatcherite push toward privatization and enhanced patenting efforts by the public universities, but it is done in the name of saving the public university. It is a paradoxical and perhaps perverse situation in which we need to patent and privatize knowledge to hopefully save the public universities and its mission of public service. That’s a tough argument for me. I see the problem, I see the very few options available to public research institutions to save themselves but, to go back to your question about responsibility, I am not sure these policies are anchored on the right notion or long-term view of responsibility.

Suppose I put the Thatcherite hat on, I would say, well, is this a good business model? Is the university really generating a

16

lot of money by patenting? Is the revenue we generate offsetting the constraints we are producing for present and future scientists in terms of delayed or curtailed publications, or the costs and delays associated with the licensing process some scientists may have to go through in order to use some of these patents for their research? The only responsible way to answer this question is not by making assumptions either way but to look at the evidence, which is ambiguous at the present time, but may become clearer in the future when the effects of more patenting will be better recognizable. But the first part of the question can be answered now as most universities are really not making a lot of money from patents.

There are a handful of cases where universities make serious money in royalties and licensing fees but most of the time they don’t. So the question is if you are not going to make a lot of money is it worth it? Or are you just basically creating constraints to future scientists for little financial reward in the present? It’s a bit like a problem of intergenerational equity. If the university takes a fully presentist perspective, it may make sense to patent aggressively and get whatever royalties they can, however limited they may be. Maximize short-term revenue because you need to balance this year’s budget. But if they think long term, to the generations of academic scientists and graduate students who will become scientists down the line and who will have to negotiate increasingly complex patent thickets resulting from the collective efforts of all universities to patent all their more or less promising inventions, or to put less knowledge out in the public domain due to the proprietary arrangements they have made with the private sector, then different strategies may be more reasonable. Companies come and go, emerge, collapse, or are sold, and their patent portfolios go where their stock goes.

But universities have a tendency to stick around for centuries, not quarters.

So even thinking just in economic terms do these patent policies make sense or are they a seriously sub-optimal arrangement that is going to foreclose a lot of future research

17

and innovation? I keep finding myself going back to the question of whether one could reliably assess this kind of responsibility toward future scientists, students, and citizens.

I agree with James Tobin that "the trustees of endowed institutions are the guardians of the future against the claims of the present,� but in the case of IP policies responsible to future generations. I don’t know what kind of tools those trustees could use to get their job done right.

J.H. Sounds like a perfect conclusion to me, thanks very much.

The Bassetti Foundation would like to thank Professor Biagioli for his time in giving this interview and it subsequent revisions and wish him well in his work as Director of the new Center for Innovation Studies at University of California, Davis.

18