By Kevin Noonan —

Several years ago, it became current among certain
academic commentators to opine that patenting genes could become a
"tragedy of the anticommons."  By this they meant that permitting gene patenting would restrict
progress, inhibit academic freedom and prevent scientists from working
cooperatively.  Significantly, most of
these commentators had neither a science background nor any experience as
patent attorneys.  Their warnings rang
hollow to those who had either type of experience, but they had (and continue
to have) influence with policymakers, Congressional aides, and the Patent
Office.

As it turns out, they were wrong, at least with regard to
academic freedom and cooperation.  In a
revealing new study, LeRoy Walters of the Kennedy Institute of Ethics and
Georgetown University and colleagues reports "consensus, diversity and
flexibility in intellectual property management" (see Nature Biotechnology 24: 31-39 (2006)).  The authors found that research university
practices were influenced primarily by market forces related to licensing
opportunities, and also by guidelines from the National Institutes of Health.

Licensing provides substantial economic benefit to
universities; for example, Columbia University received $370 million between
1983 and 2000 for the Axel patents.  The
report reveals that universities actively promote licensing patent rights to
for-profit companies, but that the licenses are rarely exclusive.  Indeed, the report finds that even exclusive
licenses are limited, either due to "field of use" restrictions or
serial "exclusive" licensing to different companies.  Large companies are much less likely to
require an exclusive license than smaller start-up companies, who require
exclusivity in order to attract investment.

Universities have increasingly used the concept of
"shop rights" to retain a research exemption, even to
exclusively-licensed technology, to permit their own scientists to practice
licensed technology.  Many universities have expanded the scope of this
exemption to permit scientists to transfer rights to practice a patented
invention to scientists at other universities doing basic (non-commercial)
research.  Inclusion of such terms has become
more important since the Madey v. Duke decision by the Federal Circuit, which
eliminated the illusion of a common-law research exemption.

Finally, the cause of the supposed problem, the profusion
of gene patents, seems to be fading.  The
39,000 DNA patents issued by the Patent and Trademark Office encompass only 20%
of genes identified in human genomic databases.  Moreover, the number of gene patents granted per year has declined every
year since 2001, a trend the authors indicate will continue.