Guest Post: A Critical Review of the NY Times Article on the Bayh Dole Act

We bring you a guest post from Abhishek Krishnan, a 5th year student at the National Law School, Bangalore. Abhishek is on the editorial board of the Indian Journal of Law and Technology, and has interned with with leading intellectual property law firms.

Abhishek reviews a NY Times article by Janet Rae-Drupee that is quite harsh on the US Bayh Dole Act. Here again, I have to apologise to Abhishek for the delay in bringing you his guest post.

While I sympathise with some of Rae-Drupee’s sentiments, I am concerned about some of the sweeping statements that she comes up with in her bid to sully the Bayh Dole Act. Illustratively, as Abhishek points out quite effectively, she completely misses the point that without the possibility of a patent, some researchers are more likely to keep their research “secret”. This romanticised “sharing” culture between scientists appears to be a bit overhyped and while it no doubt exists in some quarters, assuming that it is always the norm may be incorrect.

I thoroughly enjoyed Abhishek’s punchy review and hope the same for you too.

NY Times Article on Bayh-Dole: “When Academia Puts Profit Ahead of Wonder”

The New York Times recently published a thought-provoking article on the Bayh-Dole Act, and how it has ‘distorted the fundamental mission of universities’. The author, Janet Rae-Dupree, asserts that ‘in the past, discovery for its own sake provided academic motivation, but today’s universities function more like corporate research laboratories’, and bemoans the secrecy and changing priorities that the legislation has engendered.

She writes, ‘rather than freely sharing techniques and results, researchers increasingly keep new findings under wraps to maintain a competitive edge. What used to be peer-reviewed is now proprietary’. This is only partly true- one study does indicate that a small proportion of life-science researchers tend to delay disclosure over factors relating to patents. The possibility of financial gain might certainly bring about conflicts of interest and distract academics from their calling.

However, career concerns such as taking credit for research findings are just as likely to incentivize secrecy as patents are. As Dupree herself acknowledges a few lines later, ‘When James Watson and Francis Crick were homing in on DNA’s double-helix structure in the 1950s, they zealously guarded their work from prying eyes until they could publish their findings, to be certain that they would get the credit for making the discovery’.

On the other hand, the publish-or-perish ethos that has imbued academia must also be factored in as providing motivation to disclose. By one account, ‘patenting is often accompanied by a flurry of publication activity’. For an excellent overview of this and other Bayh-Dole related issues, see Wendy Schacht’s article .

Dupree goes on to write, ‘patenting a new basic science technique, or platform technology, puts it out of the reach of graduate students who might have made tremendous progress using it’. This concern might seem appropriate, given that the experimental use exception has been whittled away with the Madey v. Duke University ruling in 2002.

Contrast this with section 47(3) of the Indian Patent Act, 1970 which permits the use of a patented invention ‘for the purpose merely of experiment or research including the imparting of instructions to pupils’.

The article concludes, ‘decisions are now being based on possible profits, not on the inherent value of knowledge. Blue sky research — the kind of basic experimentation that leads to a greater understanding of how the world works — has largely been set aside in favor of projects considered to have more immediate market potential’.

Schacht’s article also incorporates a survey of literature on Bayh-Dole and the shifting role of universities. While there is no shortage of writers denouncing the commercialization of academic research, their arguments too are mostly principled and paint a picture of the ivory tower of academia being sullied by profitability. The contention that universities are oriented more towards marketable products than basic research simply isn’t empirically substantiated.

Professor Mary Thursby, a supporter of the Bayh Dole Act, argues persuasively that the proportion of basic to applied research has remained constant from 1983 to 1999, and another study concludes that the expenditure on basic research as a percentage of total expenditure has actually increased.

So, Bayh-Dole doesn’t seem to have had any drastic changes on the type of research that goes on within universities. Yet, ‘the pressure has increased to show applications of research, scientists who are doing sound and interesting basic research feel it is necessary to tie these studies, however tenuously, to possible applications’ in attempts at justifying expenditure or garnering funds (Lawrence Ebert’s blog post quoting an editorial of Chemical and Engineering News). Perhaps this trend has been conflated to suggest shifting priorities in academic research.

In 1965, Penzias and Wilson discovered cosmic background microwave radiation, proof that the universe was expanding, while working on a satellite communication antenna. Serendipitous as it may have been, it remains the foremost example of how Blue sky answers can show up in the unlikeliest of places, only because the questions tend to be quite amorphous to begin with. Of course, there is a difference between funding a project for developing a new polymer for tyres and, say, one to search for the Higgs Boson. But the revenue generated, especially in the institutions that command a lion’s share of technology transfer revenue, may well be applied to fund Blue sky projects, making profits quench wonder.

Dupree raises some valid concerns on how fewer than half of the 300 universities actively seeking patents even managed to break even from licensing. Acquiring a patent costs around $15,000 in fees and legal costs, and Schacht observes that most of the revenue tends to come from one ‘blockbuster’ patent. Universities ought to curb their zeal in prosecuting patent applications- the linear model of scientific research (that basic science, applied science, marketable technology, and profits must necessarily follow one another in that sequence) has been conclusively debunked. This also emphasizes an earlier post which reflected that intellectual monopolies not guarantee innovation.

To its credit, the article also recognizes the shortcomings of exclusive licenses. Most university patents are not market-ready, and monopolies over fundamental research might stymie the growth of an industry or hamper the invention’s use in other unrelated areas. This blog has spoken out in support of non-exclusive licenses for platform technologies here .

While Dupree’s indictment of the Bayh-Dole Act may suffer from some factual inaccuracies, it leads one to treat the pending Bill with some circumspection. The issues it raises on the future role of universities are ones which Indian policymakers must confront, instead of injudiciously transplanting the Act without any groundwork.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

Leave a Reply

Your email address will not be published.