IAAE Conference Symposium

1
Restraints on anti-commons is it enough?

• IAAE Conference Symposium
• Gold Coast QLD 13 August 2006
• Carol Nottenburg PhD JD

2
Anti-commons in biotechnology

• A resource prone to under use
• when multiple owners each have a right to exclude
  others from a scarce resource and no one has an
  effective privilege of use.
• Tragedy of anti-commons
• refers to complex obstacles that arise when a
  user needs access to multiple patented inputs to
  create a single useful product
• Patents granted on upstream technology will
  stymie further downstream RD of useful products

3
Is there an anti-commons?

• Original proposal was theoretical, supported only
  by anecdotes
• Anecdotal evidence for plant transformation
  technologies
• Anecdotal vidence against cloning and
  eukaryotic transformation technologies, SNP
  consortium, EST database
• Empirical studies differ but favor no
  anti-commons
• one study found at most a modest anti-commons
  effect (Murray and Stern, NBER, 2005)
• extensive survey of academic researchers found no
  anti-commons effect (Walsh, Science, 2005)
• European study also did not find anti-commons
  problem (Thumm, 2003)

4
Restraints on anti-commons

• Anti-trust law
• Patent pools and industry standards
• Post-grant patent challenges
• Patent grants tend to be narrow
• De facto research exemption
• Statutory exemptions to infringement
• Limited patent term (patent grant delay)
• Geographical limits of patents
• Difficulty of obtaining injunctions (EBay)

5
Anti-trust law

• Natural counterpoint to patents
• Mergers
• companies may have to divest or license some of
  its IP compulsory licensing
• e.g.,Ciba-Geigy / Sandoz merger had to license TK
  and other gene therapy patents

6
Patent pools

• An agreement between 2 or more patent owners to
  license their collective patents to others
• In U.S., oversight of patent pools by DOJ, FTC
  strict reqts
• Used in multimedia industry (DVD, MPEG)
• PIPRA collective for agricultural biotechnology

7
Patent procedures

• Utility requirement
• e.g., cant patent gene sequences wo known
  function
• Enablement / written description reqt
• difficult to obtain protection broader than what
  is reduced-to-practice
• Post-grant challenges
• re-examination / opposition

8
Limits on patents

• Patent term
• 20 yrs, but patent grant may take 3-8 yrs.
• Geographic limits
• most patents only filed in a few countries

9
Recourse against infringers

• Statutory exemptions
• De facto research exemption
• ignore patents and infringe
• no likely ramification (low damages bad PR)
• Injunctions difficult to obtain
• recent EBay case in U.S. removed automatic
  injunctions in patent cases
• post-EBay no injunctions in several cases

10
Is it enough?

• is there an anti-commons problem?
• if there is a problem, are the restraints enough?
• are legislative / substantive changes needed?

11
thank you

• www.cougarlaw.com