Building Web–based collaborative environments to encourage innovation in patentable technology provides different challenges than those found in the realm of copyrightable material. Cyberinfrastructure can be designed to encourage a free exchange of information and ideas that produces well–documented benefits for collaborators. But this may come at the cost of foregone patent rights, as the disclosure of information can limit options to patent. If the goal is open access, though, some argue that the predisposition toward the public domain is an important element. This essay argues that achieving openness in fields of patentable technology may require cyberinfrastructure that is designed to accommodate flexibility in the management of intellectual property. First, the potential value of patents is explored as they support the goal of open access. For some technologies, collaborative cyberinfrastructure may inadvertently restrict open access because placing a technology in the public domain removes the leverage a patent owner has to influence downstream activity. Second, this paper considers the potential role of defensive publishing in cyberinfrastructure; a lack of control over how the inventions are published may make it easier for others to surround the published technology with patents, ultimately limiting open access. In some instances, strategic defensive publishing may be warranted in order to place technologies more securely in the public domain. Both of these discussions explore the likelihood that designing cyberinfrastructure for innovation in patentable technology fields demands a keen understanding of the interface between the public domain and patents, and also a balance between retaining options for IP management and enabling the fluidity of collaboration.Contents
In Support of Open Access: To Patent or Not to Patent
Defensive Publishing
Conclusion
From its earliest years, the Internet has facilitated collaboration across distances; it continues to hold great potential for changing the patterns of innovation in a wide variety of fields. Many existing models of collaborative cyberinfrastructure are intended to share data or software code. In these cases, the intellectual property framework within which the model operates is usually copyright law. The successes of open source (OS) production models provide good examples of how the Web, in conjunction with OS copyright licenses, allows for widespread collaboration. How these seminal models of open collaboration can best be adapted to different communities, and different technology fields, is a critical area of analysis. Important challenges lie in shifting these models from copyright to patent law. The same tools that facilitate collaboration in copyrightable material may achieve unintended results when applied to fields of patentable technology [1]. This essay argues that achieving openness within the purview of patent law, may require cyberinfrastructure that is designed to accommodate flexibility in the management of intellectual property.
While the design of open innovation models for patentable technologies is fertile ground for law and economics scholars, this paper focuses narrowly on two specific issues. First, the potential value of patents is explored as they support the goal of open access. Fluid collaboration among researchers delivers well–documented benefits, but these may come at the cost of foregone patent rights because the disclosure of information limits options to patent. If the goal is open access, some argue that the predisposition toward publishing, rather than patenting, is an important element. There are instances, though, where publishing may inadvertently restrict open access because placing a technology in the public domain removes the leverage a patent owner has to influence downstream activity.
Certainly, there are many instances in which publishing is the prudent choice; among other reasons, patents are expensive to obtain and even more expensive to enforce. The second topic of discussion in this paper concerns the use of defensive publishing to achieve open access. Again, thoughtful design of cyberinfrastructure may be needed to reach the intended open access goal. In an environment where publishing occurs without thought to a strategy for how best to commit the technology to the public domain, the published technology may be more easily “fenced in” by future patents, ultimately limiting open access. In some instances, strategic defensive publishing may be warranted in order to place the technology more securely in the public domain. Both of these discussions explore the likelihood that designing cyberinfrastructure for innovation in patentable technology fields demands a balance between retaining options for IP management and maximizing the ease of collaboration.
In Support of Open Access: To Patent or Not to Patent
If an online collaboration results in a potentially patentable invention, the public disclosure of the invention over the Web will preclude patenting in most countries, and give the inventor one year from the date of disclosure to file a patent in the United States. It may be that publishing, and the concomitant relinquishing of patent rights, is appropriate. But in some cases this may be a presumption that limits options. Cyberinfrastructure designed to maximize the free exchange of information brings demonstrable benefits, but these must be weighed against the constraints of the design.
Improvement Patents
In this section two examples are discussed that illustrate how owning a patent on a technology can provide the ability to control downstream activity and therefore support a goal of open access. First, consider the case of improvement patents. Suppose an initial invention is published and, subsequently, improvements to the technology are invented and patented. These improvement patents can substantially restrict the use of the original technology; they may claim the use of the technology in combination with other important technologies, or perhaps new uses for the technology itself. Downstream improvement patenting, then, can reduce access to the initial discovery and limit the free use of it for a range of potential applications.
Alternatively, consider the situation where the inventor chooses to patent the original technology instead of publishing it. In this case, the value of any subsequent improvement patents depends on access to the underlying dominant patent. The owner of the original technology now has leverage, and can bargain. A license to the dominant patent for certain commercial markets, for instance, could be exchanged for access to the improvement patent technology in humanitarian fields of use or certain countries. In this case the choice of patenting, instead of publishing, entails greater options for open access.
Widespread Availability of Products
The meaning of open access is context–dependent. In some cases it may mean that research results, or enabling technologies, are easily available for use by a broad community. Alternatively, it may mean that products are delivered cheaply to a population that might not otherwise be reached. Different IP management strategies may be required to achieve different open access goals.
Consider, as an example, the invention of a novel vaccine. Suppose the inventor was engaged in a collaborative online environment and the potential patent rights were relinquished because the invention was publicly disclosed. In the case of vaccines, substantial capital investment will be needed after invention to enable the successful delivery of the product. Beyond the initial research and development stage, investment will be needed for further development, field trials, manufacturing, and distribution. Access to capital for bridging the divide between research and product commercialization can determine the success or failure of vaccine delivery. In this example the lack of intellectual property rights likely precludes investment interest from the private sector. Public sector sponsors, of course, are well recognized as championing the investment needed to commercialize and make widely available technologies with particular public benefit.
For some technologies, however, it may be important to retain the potential to engage private capital. If a patent were to have been obtained in the above example, the patent owner might have granted a commercial firm a license to use the technology in certain markets in exchange for an agreement to fund the various stages leading to commercialization as well make the technology available at a reasonable price in areas of the world which would otherwise not have access. This logic is not new; product development public private partnerships (PDPs), among others, are familiar with leveraging intellectual property rights, and segmenting the market in licensing agreements in order to achieve the ultimate goals of delivering biomedical innovations to poor and underserved populations where there are limited commercial markets.
If the mobilization of public sector money, whether from the government or a private foundation, is guaranteed, there is no need to leverage the patent rights as described above. But where there is still some doubt as to whether private sector resources may need to be engaged, the option to use IP rights as a tool to achieve the goals of open access may be valuable.
ThinkCycle and the Tropical Disease Initiative
In this section two models of open innovation, ThinkCycle and the Tropical Disease Initiative, provide context for further discussion of how the option to patent may be an important consideration in designing cyberinfrastructure. ThinkCycle was an organization that sought to enable “open source design innovation,” allowing a community of designers to collaboratively solve design challenges. It was piloted at MIT and a class was created specifically to test the idea and the architecture of online collaboration. Nitin Sawhney [2] examined how patents interacted with the model. In particular, more than half of the teams of collaborators in the pilot project decided to avoid public disclosure of their designs through the main architecture. After a certain point, they used private virtual meeting rooms to continue collaborating. This type of cyberinfrastructure (one which allows for the use of the Web to reach a broad number of potential collaborators and then facilitates closed collaboration among small groups where public disclosure is not a risk) may be important for the design of a Web–based collaborative tool when the technologies on which the site is focused, are patentable. Similar to the vaccine in the example above, there is the potential for patents to play a role in the post–invention processes of iterative testing, building prototypes, gaining feedback from users, manufacturing, and distribution. Some projects, of course, will not need patents, but a cyberinfrastructure that is not designed to offer flexibility in IP management choices may result in missed opportunities.
The Tropical Disease Initiative (TDI) is a model for encouraging collaborative “open source” drug development [3]. More precisely, TDI is a model for drug discovery, where the intention is that users volunteer to search and annotate shared databases in search of targets. Unlike ThinkCycle, the TDI model appears designed to forego the possibility of retaining intellectual property rights; discoveries are intentionally placed in the public domain through open collaboration. The traditional commercial model of drug development is highly dependent on intellectual property rights; patents play a key role in recouping expenditures incurred in the long path from discovery to market. In the case of TDI, further thought may be needed to determine whether the ability to leverage patent rights and segment markets is important. A model that encourages open sharing of research results, but limits drug development and delivery to only those projects backed by the public sector may not be as desirable as other more flexible open innovation models.
ThinkCycle and TDI are two examples where elements of open source copyright models are being applied to patentable technologies. Understanding how open source or open collaboration fits into the drug discovery and development process, or into the implementation of engineering designs, is a topic that deserves further analysis. There are clearly important efficiencies to be gained, but a sound understanding of the design of the collaborative mechanism will be critical.
Defensive Publishing
Often the choice not to patent is the optimal choice. Patents are costly to prosecute, and their enforcement can be prohibitively expensive to many. Even in the commercial environment, where intellectual property management is generally more strategic, patents are used selectively and may be combined with other appropriation mechanisms such as trade secrecy, lead–time, and know–how (Cohen, et al., 2000). Where the goal is open access, and where resources are especially limited, publishing will frequently be chosen over patenting. But how an invention is published can make a difference. If some strategic thought is given to the drafting of publications, a technology may be more securely placed in the public domain.
Defensive publishing is a term used to describe the intentional use of publishing to preclude future patenting of a technology [4]. In order to receive patent protection an invention should satisfy, among other patentability requirements, the novelty and non–obviousness criteria. But if there is evidence that the invention has been anticipated by previous work, the patent may be denied or the claims may be narrowed in order to account for the documented prior art [5]. A well–crafted defensive publication as prior art can make patenting more difficult, but this skill demands at least a working knowledge of patentability requirements. Advice on defensive publishing may be an important consideration in the design of cyberinfrastructure.
As an example, consider the disclosure of the nucleotide sequence of a plant promoter used to drive expression of genes of interest in agricultural biotechnology. The sequence itself can be published and placed in the public domain, thereby becoming unpatentable. However, patents issued subsequently on the use of the promoter in combination with specific genes may substantially restrict the promoter’s future use. If, instead of simply publishing the sequence, it was accompanied by language written explaining its use to drive expression of particular classes of genes, the publication may anticipate rejection of future patents under the obviousness criteria and a much broader use of the sequence may be preserved in the public domain.
In this case the timing of disclosure is not as critical as it is in retaining the right to patent, but it is still important. After a technology is disclosed it is possible to re–publish it with attention paid to a defensive publishing strategy. But if the initial public disclosure serves to provide information to a patent applicant, the priority date of the patent application may be such that a later re–publishing of the information does not achieve the desired result of limiting future patenting.
Conclusion
This essay has highlighted several cases where the disclosure of patentable inventions, occuring when cyberinfrastructure is designed to facilitate fluid collaboration and open sharing of information, can be suboptimal if the goal is open access. Whether there is a need to preserve the option to patent or whether there needs to be attention paid to strengthening the technologies’ position in the public domain through defensive publishing, choices in the management of intellectual property can be important. Tradeoffs may need to be made between the benefits derived from the openness of a collaborative system, and the ultimate goals of open access for the results of the collaboration. These tradeoffs will be different in different technology areas and warrant careful attention when designing cyberinfrastructure for collaboration.
About the author
Sara Boettiger is Director, Strategic Planning and Development, at Public Intellectual Property Resource for Agriculture (PIPRA at http://www.pipra.org/, University of California, Davis.
E–mail: sboettig [at] ucdavis [dot] edu
Notes
1. See Boettiger and Wright (2006) for an exploration of open source models as they are applied to patentable technologies.
2. Nitin Sawnhey, 2002. “Cooperative Innovation in the Commons: Rethinking Distributed Collaboration and Intellectual Property for Sustainable Design Innovation,” Doctoral Thesis, MIT, at http://web.media.mit.edu/~nitin/thesis/.
3. To the author’s knowledge TDI was never piloted.
4. See Boettiger and Chi–Ham (2007) for a more in depth examination of defensive publishing.
5. Prior art is defined as previously used, published, sold, or patented technology that may bear upon the patentability of an invention.
References
S. Boettiger and C. Chi–Ham, 2007. “Defensive Publishing and the Public Domain,” In: A. Krattiger, R.T. Mahoney, L. Nelsen, J.A. Thomson, A.B. Bennett, K. Satyanarayana, G..D Graff, C. Fernandez and S.P. Kowalski (editors). Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. Oxford: Centre for the Management of Intellectual Property in Health Research and Development (MIHR at http://www.mihr.org/), and Davis, Calif.: Public Intellectual Property Resource for Agriculture (PIPRA at http://www.pipra.org/); at http://www.ipHandbook.org.
S. Boettiger and B.D. Wright, 2006. “Open Source in Biotechnology: Open Questions Innovations Case Discussion: CAMBIA–BiOS,” Innovations: Technology, Governance, Globalization, volume 1, number 4, at http://ideas.repec.org/a/tpr/inntgg/v1y2006i4p45-57.html.http://dx.doi.org/10.1162/itgg.2006.1.4.45
W. Cohen, R. Nelson, and J. Walsh, 2000. “Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not),” NBER Working Paper, number 7552, at http://www.nber.org/papers/w7552.
Nitin Sawnhey, 2002. “Cooperative Innovation in the Commons: Rethinking Distributed Collaboration and Intellectual Property for Sustainable Design Innovation,” Doctoral Thesis, MIT, at http://web.media.mit.edu/~nitin/thesis/.
This work is licensed under a Creative Commons Public Domain License.Issues in IP Management to Support Open Access in Collaborative Innovation Models by Sara Boettiger
First Monday, volume 12, number 6 (June 2007),
URL: http://firstmonday.org/issues/issue12_6/boettiger/index.html
