. "PATENTING RESEARCH TOOLS AND THE LAW." Intellectual Property Rights and Research Tools in Molecular Biology: Summary of a Workshop Held at the National Academy of Sciences, February 15-16, 1996. Washington, DC: The National Academies Press, 1997.
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Intellectual Property Rights and Research Tools in Molecular Biology: Summary of a Workshop Held at the National Academy of Sciences, February 15–16, 1996
research are available through catalogs under conditions that approach an anonymous market. Some are patented, but the patents are unlikely to interfere with dissemination. Indeed, it might be cheaper and easier for researchers to obtain such a tool from the patent holder or from a licensed source than it is to infringe the patent by making it themselves. But not all research tools are of that character.
Some research tools can only be obtained by approaching the patent holder directly and negotiating for licenses; in this context, patents potentially pose a far greater threat to the work of later researchers. Negotiating for access to research tools might present particularly difficult problems for would-be licensees who do not want to disclose the directions of their research in its early stages by requesting licenses. Another risk is that the holders of patents on research tools will choose to license them on an exclusive basis rather than on a nonexclusive basis; this could choke off the R&D of other firms before it gets off the ground. Such a licensing strategy might make sense for a startup company that is short on current revenues, even if it does not maximize value in the long run from a broader social perspective.
Another risk is that patent holders will use a device employed by some biotechnology firms of offering licenses that impose "reach-through" royalties on sales of products that are developed in part through use of licensed research tools, even if the patented inventions are not themselves incorporated into the final products. So far, patent holders have had limited success with reach-through royalty licenses. Firms have been willing to accept a reach-through royalty obligation for licenses under the Cohen-Boyer patents on basic recombinant DNA techniques, perhaps because those patents include broad claim language that covers products developed through the use of the patented technology. But reach-through royalties have met greater market resistance for other patents, including the patents on the Harvard onco-mouse and the polymerase chain reaction (PCR).
Licenses with reach-through royalty provisions might appear to solve the problem of placing a value on a research tool before the outcome of the research is known. One difficulty in licensing research tools is that the value of the license cannot be known in advance, so it is difficult to figure out mutually agreeable license terms. A reach-through royalty might seem like a solution to this problem, in that it imposes an obligation to share the fruits of successful research without adding to the costs of unsuccessful research. But it takes little imagination to foresee the disincentives to product development that could arise from a proliferation of reach-through royalties. Each reach-through royalty obligation becomes a prospective tax on sales of a new product, and the more research tools are used in developing a product, the higher the tax burden.
A further complication arises in the case of inventions that have substantial current value as research tools but might also be incorporated into commercial products in the future. It might be necessary to offer exclusive rights in the