In the week following the US administration’s executive order on immigration, which included a travel ban for individuals from seven designated countries, we saw a flurry of activity and responses.
Over the past 30 years the ties between academic research and commercial enterprise have increased enormously. Much of this increase has involved attempts by universities to capitalize on the intellectual property created by their research scientists using the US patent system. The Editorial in the October issue of Nature Methods discusses this change and the challenges facing academics interested in commercializing their innovations.
The America Invents Act was signed into law on September 16 by President Obama as the Nature Methods Editorial went to press. As discussed in the Editorial, this law introduces a fundamental change in US patent law that impacts how US academics and their technology transfer offices will handle their intellectual property once the law goes fully into effect a year from now.
Overall, the harmonization of US patent law with the rest of the world should greatly simplify patent claims. But it also presents challenges and fails to fix some aspects of patent law that make little sense, like forcing the same 20-year patent lifetime on classes of inventions that display huge disparities in the time and cost of moving from patent filing to commercial product and the corresponding difference in commercial lifetimes. The implementation of different patent lifetimes for different classes of inventions, for example pharmaceuticals versus computer technology and processes, would help correct severe imbalances in the current system. But given the years required to obtain passage of the America Invents Act, further significant changes are likely years away.
The links below have additional information and commentary on patent law and commercialization in academia.
US switch to first-to-file patents could cause minor shake-up Nat. Med. 17, 906 (4 Aug 2011)
New models emerge for commercializing university assets Nat. Biotechnol. 29, 774 (8 Sept 2011)
Patent reform on the brink Nat. Biotechnol. 29, 778 (8 Sept 2011)
The Effects of the America Invents Act on Technological Disclosure Patently-O Blog (8 Sept 2011)
Patent reform bill passes US Congress – September 09, 2011 Nature newsblog (9 Sept 2011)
Patents Directed to Human Organisms Patently-O Blog (9 Sept 2011)
Guest Post – To Promote Progress in Science and Job Creation Patently-O Blog (12 Sept 2011)
Patent medicine Nature 477, 249 (14 Sept 2011)
New Patent Law Could Change How Academics Commercialize Discoveries ScienceInsider (14 Sept 2011)
Patent Reform Shuffles Who Is First in Line Science 333, 1559 (16 Sept 2011)
Guest Post: Preclusive Inventor Disclosure Under Leahy-Smith Patently-O Blog (22 Sept 2011)
On Wednesday evening, we hosted the third installment of the monthly Science Online NYC (SoNYC) discussion series. The topic for debate this month was “Science and the Law” and the panel featured Nadim Shohdy, Matt Berntsen Simon Singh (who kindly stayed up late in the UK so that he could join us via Skype) and Dan Vorhaus.
As is our usual format, following short introductory talks from the panelists, we invited attendees present in person at Rockefeller University or watching online to take part in a wider discussion.
The evening began with an introduction by Simon Singh on his experiences of being sued for libel in England, highlighting some key differences in the Law in the UK and the US. One of the questions from the audience was whether Singh would write the same article again if he’d known what he knows now. Singh reflected that yes, there were things that could potentially have been done such as not naming an organisation or slightly softening the tone used, but the key issue here was why should a journalist feel scared to do their job?
Later in the evening, Matt Berntsen began his talk with a two sentence definition of libel laws in the US, which stressed the importance of consent. Translating for the less legally-aware in the audience, Dan Vorhaus explained that if you interview or write a piece about an individual or an organisation and they OK it before you publish it, they cannot later sue you about its contents.
Singh’s libel discussions concluded with some crowd-sourced advice for all bloggers to check out online guidelines by Sense about Science in the UK and Electronic Frontier Foundation in the US about libel laws.
Nadim Shohdy chose to focus on patent law in the US, giving an overview of the Bayh-Dole Act, which is the US legislation that relates to research work that is funded by federal government. Its outcome was to give universities (and others) the intellectual property rights to their inventions.
Discussions later in the evening returned to patents, specifically whether or not it should be possible to patent individual genes. A loose explanation of current situation in the US is that discoveries cannot be patented, whereas inventions can be. To date, genes have fallen into the latter category as they are “created” in lab. However, ongoing legal discussion around the BRCA genes involved in breast cancer may result in changes to the previously accepted status quo.
In the final set of comments before everyone moved to the bar to continue the discussions, Dan Vorhaus brought the elephant in the room around Science and Law out onto the stage in an attempt to promote further dialogue. Aware that lawyers are stereotypically seen as unapproachable and “unsexy,” and that, frustratingly, Law often trails some years behind scientific advances, Vorhaus asked how scientists and lawyers could develop closer collaborations. One suggestion included scientists helping lawyers to identify developments that are likely to have policy and/or legal implications. For example, rapidly falling costs of DNA sequencing were clearly going to lead to a wider accessibility and use of personal genomics. However, there is still only one piece of legislation specifically relating to the use of genetic material – other legal decisions are taken by interpreting and re-purposing other areas of Law, a situation which is less than optimal.
To read what people on Twitter were saying about the event, check out our Storify of tweets at the bottom of this post.
Do let us know if you blog about the event and we’ll include a round-up of links here.
Have been added to our Facebook page. Do let us know if you’d like us to link to any of yours.
We do also live-stream each SoNYC event to give as many people as possible the chance to take part in the debate. Check out our livestream channel where the archives of the first two meetings are currently hosted.
There will not be a SoNYC in July as we are taking the month off, so the next event will be held in August. The details of August’s event will be announced soon – keep an eye on the SoNYC twitter account for more details and/or watch the #sonyc hashtag.
If you have a suggestion for a future panel or would be interested in sponsoring one of the events, please get in touch.
NB. Please let us know of any mistakes in the recounting of the legal definitions from this event so that we can correct them.
