Patents: Friend or Foe of Scientific Innovation

When an inventor discovers something new, she/he wants to patent it to protect her/his rights and to have complete control over this creation. A patent consists of a set of exclusive rights granted by the government of a country to an inventor for a limited time in exchange for public disclosure of the invention. However, a patent excludes others from making, using, offering for sale, or selling the invention throughout the country where the patent is given. It has been argued by many that patents may stifle innovation though they serve an important role in protecting the rights of a researcher.

Tom Fitting: Panelist at Roundtable Discussion

“Patents: Friend or Foe of Scientific Innovation” was the topic for the latest event Roundtable Discussion on Communicating Trends organized by Oxbridge Biotech Roundtable (OBR)-San Diego in collaboration with Career and Postdoctoral Services Office, The Scripps Research Institute (TSRI). The speakers for the event were Don Lewis (Partner at Lewis Kohn, LLP) and Tom Fitting (TSRI Chief Patent Counsel). They explained in detail the general and TSRI specific rules related to disclosure obligations, licensing and patent procedures. They also discussed briefly concerns about opening new businesses arising out of new intellectual property (IP) rights and whether it’s beneficial to start a new company or license it out straight away. Their talks were followed by a brainstorming session on the various aspects of patents and licensing, its pros and cons and the usefulness of the US government patent policy.

Tom Fitting and Don Lewis kicked the event off by explaining the current practices of patent law using examples from their own practices and other TSRI policy-related examples. They emphasized the importance of patents and intellectual property rights by describing how TSRI benefitted due to big pharma collaborations in the past. They also discussed the potential benefits and the problems associated with big pharma associations and availability of other business models for current inventors. One particular message in their talks was to have a broad disclosure to keep the options open for the inventor during patent filing. After the talks, participants discussed a variety of burning questions related to –

• Patent filing
• Patent maintenance
• What is better – to start a new spin-off, license the technology or just sell the IP-rights
• Are publications a good idea before or after patent filing
• What is the difference in IP rights based on cell-lines and small molecules

Don Lewis: Panelist at Roundtable Discussion

The discussion revealed an important misconception that patent infringement is acceptable in basic science research. One interesting case discussed at length was about the patenting of two genes linked to breast and ovarian cancer, BRCA1 and BRCA2 by Myriad Genetics Inc. Panelists discussed the potential outcomes of this case and how it affects future gene patenting cases and associated diagnostics methods and scientific innovation in general.

The speakers cleared many doubts about the recent America Invents Act (AIA) passed in 2012 and explained how AIA simplified the patent laws by eliminating many obstacles and thereby speeding up the process of converting a new invention into a business. Rachel Tsui, President of OBR-San Diego made a valuable suggestion that students should ensure the industrial savviness of a Principal Investigator before joining his/her laboratory for graduate or postdoctoral studies. This is especially true if students are interested in leading their research towards patenting and commercialization. After a serious and fruitful discussion, all the panelists agreed on one thing that patents do not impede but in fact promote innovation, though bad policies sometimes may hamper new innovations.