Inverting the Logic of Scientific Discovery

Abstract

This Article addresses a problem that has attracted significant attention from patent scholars: the potential for patents on research tools - technological products and processes that are critical inputs of scientific experimentation - to inhibit basic scientific research. The Article first argues that a fundamental distinction between "upstream" intellectual assets and "downstream" particularized technologies is central to the structure of patent law and its contribution to scientific progress. In this system, patent law specifically prohibits the patenting of upstream assets such as natural laws, natural phenomena, and abstract principles on a "fundamentality" rationale; these assets enable wide varieties of derivative applications and are better suited for common ownership in the public domain where all persons can freely draw upon them in their innovative endeavors. Rather, patent law reserves proprietary rights - and the monopoly profits they confer - for downstream, particularized technologies such as end-user goods. Drawing from studies in the sociology of science concerning the "material culture" of scientific exploration, this Article shows how some patented technologies may be even more foundational than knowledge itself. For example, human embryonic stem cells, which are patentable technologies when isolated and purified outside of the human organism, hold the key to revealing basic biological knowledge. Patents over this resource effectively create exclusive individual rights over an area of immense scientific importance and wide downstream applicability. This Article argues that the common law prohibition against patenting natural laws, natural phenomena, and abstract principles provides a legal and prudential basis for constraining patents on human embryonic stem cells and other similarly-situated biotechnology research tools. Just as knowledge itself is not patentable, courts should constrain patents on the necessary technological fountains from which it springs.

Keywords: patents, research tools, biotechnology, intellectual property, common law, natural law, natural phenomena, abstract principles, patentable subject matter, stem cells

JEL Classification: K00, K11, L40, L43, O30, O31, O32, O33, O34, O38