«Committee on Intellectual Property Rights in the Knowledge-Based Economy Board on Science, Technology, and Economic Policy Policy and Global Affairs ...»
Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, Editors
Committee on Intellectual Property Rights in the Knowledge-Based Economy
Board on Science, Technology, and Economic Policy
Policy and Global Affairs Division
THE NATIONAL ACADEMIES PRESS
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NOTICE: The project that is the subject of this report was approved by the Governing Board of the National Research Council, whose members are drawn from the councils of the National Academy of Sciences, the National Academy of Engineering, and the Institute of Medicine. The members of the committee responsible for the report were chosen for their special competences and with regard for appropriate balance.
This study was supported by Contract No. NASW-99037, Task Order 103, between the National Academy of Sciences and the National Aeronautics and Space Administration, and by the U.S. Department of Commerce, Andrew W. Mellon Foundation, Center for the Public Domain, Pharmacia Corporation, Merck & Company, Procter & Gamble, and IBM. Any opinions, findings, conclusions, or recommendations expressed in this publication are those of the author(s) and do not necessarily reflect the views of the organizations or agencies that provided support for the project.
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Copyright 2004 by the National Academy of Sciences. All rights reserved.
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Patents in the Knowledge-Based Economy, edited by Wesley M. Cohen and Stephen A. Merrill, studies patent quality, litigation, and patenting and licensing in biotechnology, software, and the business methods.
The cover design incorporates original illustration from the following U.S. patents issued over a nearly 160year period:
U.S. Patent 6,506,554; Core structure of gp41 from the HIV envelope glycoprotein; Chan, David C.
(Brookline, MA); Fass, Deborah (Cambridge, MA); Lu, Min (New York, NY); Berger, James M., (Cambridge, MA); Kim, Peter S. (Lexington, MA); Granted January 14, 2003.
U.S. Patent 6,423,583; Methodology for electrically induced selective breakdown of nanotubes; Avouris, Phaedon (Yorktown Heights, NY); Collins, Philip G. (Ossining, NY); Martel, Richard (Peekskill, NY);
Granted July 23, 2003.
U.S. Patent 6,313,562; Microelectromechanical ratcheting apparatus; Barnes, Stephen M. (Albuquerque, NM); Miller, Samuel L. (Albuquerque, NM); Jensen, Brian D. (Albuquerque, NM); Rodgers, M. Steven (Albuquerque, NM); Burg, Michael S., (Albuquerque, NM); Granted November 6, 2001.
U.S. Patent 821,393; Flying machine; Wright, Orville (Dayton, OH) and Wright, Wilbur (Dayton, OH);
Granted May 22, 1906.
U.S. Patent 223,898; Electric lamp; Edison, Thomas A. (Menlo Park, NJ); Granted January 27, 1880.
U.S. Patent 4750; Improvement in sewing machines; Howe, Jr., Elias, (Cambridge, MA); Granted September 10, 1846.
The National Academy of Sciences is a private, nonprofit, self-perpetuating society of distinguished scholars engaged in scientific and engineering research, dedicated to the furtherance of science and technology and to their use for the general welfare. Upon the authority of the charter granted to it by the Congress in 1863, the Academy has a mandate that requires it to advise the federal government on scientific and technical matters.
Dr. Bruce M. Alberts is president of the National Academy of Sciences.
The National Academy of Engineering was established in 1964, under the charter of the National Academy of Sciences, as a parallel organization of outstanding engineers. It is autonomous in its administration and in the selection of its members, sharing with the National Academy of Sciences the responsibility for advising the federal government.
The National Academy of Engineering also sponsors engineering programs aimed at meeting national needs, encourages education and research, and recognizes the superior achievements of engineers. Dr. Wm. A. Wulf is president of the National Academy of Engineering.
The Institute of Medicine was established in 1970 by the National Academy of Sciences to secure the services of eminent members of appropriate professions in the examination of policy matters pertaining to the health of the public. The Institute acts under the responsibility given to the National Academy of Sciences by its congressional charter to be an adviser to the federal government and, upon its own initiative, to identify issues of medical care, research, and education. Dr. Harvey V. Fineberg is president of the Institute of Medicine.
The National Research Council was organized by the National Academy of Sciences in 1916 to associate the broad community of science and technology with the Academy’s purposes of furthering knowledge and advising the federal government. Functioning in accordance with general policies determined by the Academy, the Council has become the principal operating agency of both the National Academy of Sciences and the National Academy of Engineering in providing services to the government, the public, and the scientific and engineering communities. The Council is administered jointly by both Academies and the Institute of Medicine. Dr. Bruce M. Alberts and Dr. Wm. A. Wulf are chair and vice chair, respectively, of the National Research Council.
Our committee’s study of the patent system was a much more ambitious undertaking than we anticipated at its outset, and we have many people to thank for their contributions to its completion. First, through eight meetings, two conferences, numerous report drafts, and preparation of the response to reviewers’ comments, the members of the committee not only provided thoughtful individual contributions but also successfully bridged differences in professional training and experience to reach a common understanding and consensus recommendations. One committee member, Gerald Mossinghoff, resigned on December 1, 2003, as this report was being revised before submission to the National Research Council review process. He played a very active and constructive role in the deliberations of the committee and provided comments on a preliminary report draft. We regret not having the benefit of his advice in the final stage of writing.
More than 150 people assisted the committee’s deliberations in a variety of ways—conducting and reporting on research, speaking at conferences, presenting views at open meetings of the committee, and providing other valuable information through communications with staff. Their contributions were indispensable to the committee’s work, and they are listed in Appendix B of the report.
Although self-initiated, the study as a whole or activities within it have attracted diverse support from government agencies, foundations, and corporations. The National Aeronautics and Space Administration sponsored the project as part of its program support of the Board on Science, Technology, and Economic Policy (STEP) from 1999 to 2003. The Andrew W. Mellon Foundation was principal sponsor of the conference Intellectual Property Rights: How Far Should They Be Extended? as well as of the commissioned research activities that followed it. A supplemental Mellon contribution will help to support disix
x ACKNOWLEDGMENTSsemination of the results of the project. A grant from the Center for the Public Domain enabled the project to develop a web site dedicated to intellectual property issues across the National Academies and supported other activities. The web site (http://ip.nationalacademies.org) has been an indispensable part of our efforts to keep the community of interested people informed of our progress and an avenue for them to express their views. The U.S. Department of Commerce, through its Technology Administration, sponsored a conference on university patenting and licensing. Several corporations—Pharmacia, Merck and Co., Procter and Gamble, and IBM—provided unrestricted funds. Finally, the U.S.
Patent and Trademark Office (USPTO) paid the salary of a senior patent examining supervisor who, under the Commerce Department’s Science and Technology Fellowship Program, worked full-time with the staff and committee from September 2000 through September 2001. The USPTO also provided data and suggested factual corrections to the prepublication version of this report at our request. We are very grateful to these sponsors and contributors.
At the outset of the study phase of this project, we were encouraged to consult other National Research Council boards and committees with an interest in intellectual property policy and relevant technical and legal expertise. The committee extended invitations to three program units to select a volunteer to serve in a liaison capacity, contributing to framing the study and participating in its factfinding phrase but not deliberating on nor assuming responsibility for the committee’s findings and recommendations. Two units accepted STEP’s invitation. David Korn of the Association of American Medical Colleges represented the Science, Technology, and Law Program and Pilar Ossorio of the University of Wisconsin law faculty represented the National Cancer Policy Board of the Institute of Medicine. Both actively participated in a number of panel meetings, helped to focus the inquiry in its early stages, and provided useful information to the committee. We are grateful to them for their assistance, especially as they were not able to see the project through to its conclusion.
This report has been reviewed in draft form by individuals chosen for their diverse perspectives and technical expertise, in accordance with procedures approved by the National Research Council’s Report Review Committee. The purpose of this independent review is to provide candid and critical comments that will assist the institution in making its published report as sound as possible and to ensure that the report meets institutional standards for objectivity, evidence, and responsiveness to the study charge. The review comments and draft manuscript remain confidential to protect the integrity of the deliberative process.
We wish to thank the following individuals for their review of this report:
David Forney, Motorola, Inc. (ret.) Dominique Guellec, European Patent Office Donald Grant Kelley, Intellectual Asset Management Assoc., LLC Katharine Ku, Stanford University Roderick McKelvie, Fish & Neave Robert Merges, University of California, Davis, Law School Steven Odre, Amgen, Inc.
Arti Rai, Duke University Law School F. M. Scherer, Harvard University emeritus Carl Shapiro, University of California, Berkeley Anthony Siegman, Stanford University emeritus Although the reviewers provided many constructive comments and suggestions, they were not asked to endorse the conclusions or recommendations nor did they see the final draft of the report before its release. The review of this report was overseen by Gilbert Omenn, University of Michigan, and Joe Cecil, Federal Judicial Center. Appointed by the National Research Council, they were responsible for ensuring that an independent examination of this report was carried out in accordance with institutional procedures and that all review comments were carefully considered. Responsibility for the final content of this report rests entirely with the authoring committee and the institution.