August 25, 2004 · Richard Posner
Doug Lichtman, a very able IP professor at the University of Chicago Law School, took sharp issue with my brief note on patent fair use, emailing me that my “quick reference to patent fair use…is problematic for the simple reason that, often, the key market for research tools is to sell those tools to other researchers. If a researcher’s use of patented research tool is fair use, that would significantly degrade the incentive to create those research tools inthe first place. Moreover, even if your approach works, it is in sharp conflict with the Bayh-Dole instinct that society might very well be better off in a world where academic researchers patent their work. As you know, that legislation was passed in response to evidence that university breakthroughts were sitting on the shelves both because (a) they could not be owned exclusively under old NIH rules; and (b) universities had too little incentive to bring their work to the attention of industry. Overall, patent fair use and the research exception are an important topic, but your short sentence seems to unfairly duck the many hard issues.”
These are difficult issues, to which I can’t do full justice here. Lichtman and I differ on the importance of patents as motivators of research. The effects of patents on innovation are extremely complex, an important consideration being that when a field becomes blanketed by patents, as is happening with research tools, inventors are forced into what can be costly and protracted negotiations for licenses in order to be able to use and build on previous innovations. So we have to consider carefully what alternatives there are to patents for motivating innovation in pharmaceutical and other research. It turns out that there are many alternatives, including government grants, university grants (universities have their own resources–Harvard has an endowment of $20 billion), the commercial advantages of a headstart, and trademarks.
And are we really better off in a world in which academic researchers can patent their work? Maybe so, but a countervailing factor is that the patentability of academic research deflects academic researchers from basic to applied research, which may have long-run consequences for innovation that are adverse.