Intellectual Property and Cyberinfrastructure
First Monday

Intellectual Property and Cyberinfrastructure by Dan L. Burk



Abstract
The development of a new generation of cyberinfrastructure promises to increase and facilitate globally distributed scientific collaboration as well as access to scientific research via computer networks. But the potential for such access and collaboration is subject to concerns regarding the intellectual property rights that will be associated with networked data and with networked collaborative activity. Intellectual property regimes are generally problematic in the practice of science, because scientific research typically assumes practices of openness that may be hampered or obstructed by intellectual property rights. These difficulties are likely to be exacerbated in the context of networked collaboration, where the development and use of intellectual resources will likely be distributed among many researchers in a variety of physical locations, often spanning national boundaries. Such issues may be addressed by a combination of public and private approaches, including amendment of U.S. law to recognize transborder collaborative work, and adoption of clarifying contractual agreements among those who are collaborating via cyberinfrastructure, including cautious adaptation of “viral” licensing from the open source coding community.

Contents

Introduction
Transborder Conflicts
Patents and Cyberinfrastructure
Recent Patent Precedent
Solutions for Transborder Science
Engaging Private Ordering
Open Source and Open Science
Conclusion

 


 

Introduction

As the papers in this symposium have demonstrated, coordinated development of cyberinfrastructure promises to enhance research and innovation by allowing remote, shared access to unique and costly research equipment; by harnessing the power distributed computing; by fostering collaboration and joint investigation; by facilitating access to shared databases and information repositories. Intellectual property law will clearly be a consideration, and a major consideration, in many aspects of cyberinfrastructure development (Burk, 2007; David and Spence, 2003; Burk, 2000).

As other papers in this symposium have suggested, the promise of intellectual property rights may promote investment in certain types of research; the presence of such rights may also deter researchers from pursuing certain lines of investigation where rights are uncertain or infringement liability is a threat. The availability and allocation of intellectual property may affect the structure of research collaborations between the public and private sectors. Intellectual property incentives may determine the frequency and extent to which researchers share their results with the world and with each other. Indeed, the presence or absence of intellectual property may affect the development of technical standards for the information and communication technologies (ICTs) on which cyberinfrastructure will be based.

These considerations are substantial but they are not new, and certainly not unique to the development and robust employment cyberinfrastructure. The impact of intellectual property on the practice of science has been well documented and well explored (Eisenberg, 1987; Merges, 1996), as has the issue of intellectual property in research partnerships between the public and private sectors (David, 2004; Nelson, 2004). The problem of intellectual property in technical standards–setting is also well known. These matters present persistent concerns across a range of specific instances, and while easy solutions are not imminent, the issues have been rather thoroughly vetted and solutions have been proposed. I am not likely to add anything new, much less propose a comprehensive solution to these problems in this essay.

Rather than review or even expand upon those previous analyses, my task in this essay is to discover whether there is anything characteristic or unusual regarding intellectual property in the context of cyberinfrastructure. I shall argue that there is; that the collaborative and transborder nature of research via cyberinfrastructure presents a profile characteristic of cyberinfrastructure, and which ought to be addressed in the planning and development of such cyberinfrastructure. This specialized profile engages legal concerns that lie at the intersection of intellectual property law, research policy, and transborder conflicts. In describing and analyzing this concern for cyberinfrastructure, I shall naturally draw upon previous analyses of these issues, but will focus on their incarnation as an aspect of cyberinfrastructure development.

 

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Transborder Conflicts

Although the development of cyberinfrastructure will occur largely at the national level, the use and the benefits of cyberinfrastructure will, by design, not be confined to any single nation. In a global environment of computerized, distributed access and collaboration, application of territorially–based law becomes uncertain (Burk, 1999; Burk, 1994). Data located in one jurisdiction may be nearly instantaneously accessed and used in a different jurisdiction; the formal law governing such use may differ dramatically between such jurisdictions. Scientists located in different jurisdictions may jointly generate new data, techniques, or materials; the formal laws governing ownership and allocation of such collaborative products may again differ dramatically between jurisdictions. Determining which jurisdiction’s laws should govern in the case of incompatible legal demands is a difficult and often uncertain exercise.

This phenomenon of multijurisdictional legal conflict has been well–documented and thoroughly explored in the context of global computer networks generally (Burk, 1999). The advent and escalation of Internet usage has posed a variety of jurisdictional quandaries regarding online speech, privacy, and intellectual property. Because the Internet offers relatively low–cost multijurisdictional communications to the average person, activity sited in one jurisdiction, that violates or offends the law of another remote jurisdiction has proliferated. In some instances, the jurisdiction where the effects of online activity are felt has asserted its law; in other instances, the jurisdiction where the user or computer equipment is physically sited may assert the primacy of its law. In many cases, multiple inconsistent legal claims may be made, placing Internet users in an impossible quandary of compliance.

This will unquestionably be the case for intellectual property issues. Intellectual property protection arises under national law, extending only as far as the border of a country that has granted a copyright, patent, or other form of protection. There is no international or multijurisdictional grant of intellectual property rights. Additionally, because the grant of intellectual property rights is unique to each country, the scope and character of such rights varies from country to country. For example, the United States differs markedly from the rest of the world in awarding patents to the first person to invent the item claimed in a patent, rather than to the first person to file a patent application on the claimed item [1]. The United States also grants inventors a one–year “grace period” to file a patent application after public disclosure of an invention, unlike the majority of other countries which cut off the opportunity for a patent immediately upon public disclosure [2].

 

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Patents and Cyberinfrastructure

While many forms of intellectual property will be important to cyberinfrastructure (Burk, 2007; Burk, 2000), and all forms vary somewhat between nations, in this essay I shall focus on patent law. Patents are a form of intellectual property that is likely to have a profound impact on cyberinfrastructure innovation and collaboration (Burk, 1993). Patent law has traditionally been the form of intellectual property directed to functional or utilitarian items: processes, machines, articles of manufacture, compositions of matter [3]. Patent law excludes from protection products of nature; that is, materials that have not been in some way changed or altered by humans. Patent law also typically excludes from its ambit laws or principles of nature, including pure mathematics, on the theory that these are discoveries inherent in the natural world rather than the products of human ingenuity.

Unlike other forms of intellectual property that arise spontaneously when protected information is created or used, patents entail rights that arise only after the review and approval of a governmental agency. Inventors must apply for a patent, submitting for examination a document that demonstrates the invention meets statutory criteria of novelty, usefulness, and inventiveness. The application must also disclose how to make and use the invention, and include claims that set forth the characteristics of the technology to be covered by the patent [4]. The examining agency will reject applications that fail to meet these criteria, requiring applicants to either amend their claims to meet the requirements, or forgo issuance of a patent.

Because the patent specifies in its claims the limits of the technology it covers, the coverage of a patent may be broad or narrow, depending upon the scope of the claims. But with regard to the technology specified in the patent claims, the range of acts covered by the patent is quite broad and expansive. Once approved, the patent confers the exclusive rights to make, use, sell, offer for sale, or import the invention described in the patent claims [5]. Additionally, liability for patent infringement is strict, and there are very few user privileges or exceptions to the exclusive rights of the patent holder.

International treaties have to some extent harmonized the characteristics of intellectual property rights around the world. In particular, the treaty on Trade Related aspects of Intellectual Property (TRIPs) sets certain minimum standards for patents, copyrights, and other forms of intellectual property [6]. Accession to TRIPs is a requirement for admission to the World Trade Organization (WTO), membership in which has been sought by the majority of nations. However, significant idiosyncracies of national law remain. Some nations are not signatories to TRIPs; as of this writing, some important jurisdictions, notably Russia, remain outside the WTO, and so outside the TRIPs framework. Least developed nations are also allowed some degree of variance from the requirements of TRIPs due to their economic status. And, even within the TRIPs framework, the treaty sets the floor, but not the ceiling — signatory nations must comply with certain minimum standards set out in the treaty, but there may be local jurisdictional variations away from this baseline.

These variations may be specific not only to the character of national patent law, as in the case of the United States idiosyncratic “first to invent” rule mentioned above. National law may discriminate between activity in is own jurisdiction and activity elsewhere. For example, under United States patent law, a patent or printed publication disclosing an invention anywhere in the world will disprove the novelty of the invention, possibly precluding the inventor from obtaining a patent. However, the novelty of an invention can be disproven by “knowledge or use” of the invention only in the United States, its territories or possessions [7]. Thus, whether online activity is classified as a “printed publication” or as “knowledge or use,” and whether the latter type of online activity is deemed to occur in the United States, may affect the availability of a patent in the United States.

 

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Recent Patent Precedent

These types of issues are well illustrated by the recent patent dispute between Research in Motion (RIM) and NTP, Inc. over RIM’s communications system employing the “Blackberry” handheld PDA device [8]. NTP alleged that the RIM system infringed several U.S. patents covering a system and methods for transmitting e–mail via wireless telephony. A jury found RIM to infringe the NTP patents. On appeal, RIM argued that it could not infringe NTP’s patents, because portions of the RIM system were physically sited in Canada, outside of U.S. jurisdiction. Consequesntly, RIM argued, because all the elements recited in the NTP patents could not be found within U.S. territory, there could not have been an infringement of the U.S. patents.

The appellate court reviewing the case agreed in part, and disagreed in part, drawing a distinction between the device claims and the process claims in the patents. The appellate court held that users of the Blackberry devices in the United States were using an instrument that infringed on the U.S. patent even if some elements of the total system were outside U.S. territory. The court viewed the system as a large instrumentality extending over the border — in essence, holding that the system was in use in U.S. territory even though bits of it hung over the edge of the United States. But the court treated the method or process patent claims quite differently, rejecting the notion that a method could be in use in the United States when certain steps in the process occurred outside U.S. territory.

This opinion and other related cases are important to online research for establishing that users of an “extended instrumentality” or system could be infringing a patent on that system in U.S. territory even if parts of the system are located outside the U.S. At the same time, the case also establishes the importance of characterizing online activity as either a “process” or as use of a “product” or system: if collaborative cyberinfrastructure is characterized as the former, there is no potential for patent liability, if it is characterized as the latter, patent liability is possible. Unfortunately, participants in e–science may not necessarily know in advance how a particular activity might be characterized.

A similar set of issues has arisen in a series of cases involving Microsoft, one of which is being reviewed this year by the United States Supreme Court [9]. These cases arise under a different, but related provision of the patent statute, which prohibits exportation of components from the United States to be assembled offshore into the claimed invention — essentially, penalizing attempts to make an end run around a U.S. patent by engaging in what would be infringing manufacturing, but finishing the product outside the U.S. In these cases, Microsoft exported a golden “master disc” containing software that infringed a U.S. patent. The master disc was used to copy the software onto computers built outside the U.S. The question in the cases asks whether software can be a “component” of a patented invention assembled outside the U.S., or whether software should receive different treatment than tangible, physical components.

Supreme Court review of this case may clarify the statute as it applies to the situation of shipping software over the border on physical media — a format such as the golden “master” disc. But it is unlikely to resolve the broader problem of patent liability for movement of software outside the United States where physical media are not involved — for example movement of software or over cyberinfrastructure. Lower court decisions that might bear on this question are decidedly mixed: some opinions say that software must be treated no differently than any other patented invention, whereas others seem to imply that transborder movement of information, without movement of tangible media, cannot trigger liability under the relevant patent statute provisions. Much of this confusion stems from an underlying confusion regarding the nature of software, a problem the U.S. courts have been struggling with for three decades (Burk, 2006). Resolution of the problem is not likely to come quickly, nor in a single new court decision.

Ownership, as well as infringement, may be at issue in multijurisdictional cyberinfrastructure collaborations. Research is likely to yield valuable data sets, enabling tools including software, and ultimately even physical products, and control or assignment of these research outcomes may be a point of concern. Different jurisdictions may have different rules determining inventorship or assignment of research innovation. For example, United States law explicitly states that co–inventors need not work in the same physical vicinity in order to be named on a patent [10]. However, U.S. law excludes from consideration for a patent inventive work that is not carried out either in United States territory, or a in WTO country [11]. Thus, inventive work that occurs in non–WTO jurisdictions, such as Russia, would not qualify for a U.S. patent. In an online collaboration between Russian and American researchers, the determining the location of inventive work could be both critical and contested.

Another key patent law difference, which is inconsistent among industrialized nations, but pertinent for open access research, is the presence or absence in patent law of a research exemption to infringement (Eisenberg, 1989). Many industrialized nations have enacted statutory experimental use exceptions to their patent law, allowing experimentation with and testing of patented inventions without permission of the patent owner. Canada, lacking such a statutory exception, has developed a strikingly broad common–law exception for experimental patent use. However, the United States, outside of a very narrow statutory exception for development of regulatory health and safety data [12], has essentially no experimental use exception for commercial uses of a patented invention [13].

 

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Solutions for Transborder Science

In some senses, these problems are not unusual. Some commentators have stressed that multinational corporations deal with versions of interjurisdictional conflicts on a regular basis, due to regulatory variations in the environmental, tax, labor, consumer protection, intellectual property, and other laws in the multiple nations where they do business (Goldsmith, 1998). Certainly Research In Motion and Microsoft found this to be true with regard to patent law, in the cases I have described. Courts and other tribunals have developed principles of law, called appropriately conflicts of law principles, to help them decide which jurisdiction’s law should apply to a given dispute — typically, the physical location of an occurrence is central to deciding what law applies, but other factors such as the citizenship of the parties involved, or the interests of the jurisdictions in resolving the outcome, may also be considered [14].

However, the practice of science, while not wholly divorced from financial considerations and commercial influence, is not a multinational business venture, and it is not at all clear that the financial and experiential resources of scientific researchers are properly compared to those of the business community. Even with regard to multinational business activity, it is not clear that past experience with conflicts law will “scale” well to the ubiquitous and pervasive reach of online activity. Although multinational operations have lived uneasily in the past with the specter of multijurisdictional liability, conflicts analysis is messy and uncertain — a difficult and arcane area of law that even relatively few lawyers understand. Not only are the relevant factors for conflicts analysis often subjective and indeterminate, but as essentially a decision of meta–law, conflicts analysis itself often has a recursive loop characteristic: since the conflicts law of different jurisdictions may themselves conflict, before courts can apply conflicts to determine which law should govern a dispute, they frequently must make a “meta–conflicts” decision as to which jurisdiction’s conflicts laws should govern the conflicts’ decision.

Cyberinfrastructure leads inevitably to the issues in these cases. Online collaborators will develop patentable innovations, contributing portions from different jurisdictions. Researchers will develop patentable inventions drawing upon information stored in databases, or generated on equipment located in other jurisdictions. Researchers will access equipment or run software located in another jurisdiction, which would be infringing in their own jurisdiction. For the most part such patent quandaries may be inadvertent, but it is not difficult to imagine intentional strategic location of research activity or of resources so as to avoid the patent law consequences of certain jurisdictions, or to capitalize on the patent law consequences of other jurisdictions.

Some solutions may be publicly developed, using the institutional mechanisms of the state, while others may be privately developed, implemented between users of cyberinfrastructure rather than implemented generally by a public body. In another dimension, some approaches to the problem may also be considered as “top–down,” implemented hierarchically upon cyberinfrastructure development. Or, solutions may be “bottom–up,” implemented and sometimes developed by those actively involved in research activity. These two dimensions of solution development are independent, but overlapping; for example, public solutions will tend to be “top–down.” I will suggest approaches to the problem from each of these perspectives, but will note at the outset that no one approach is likely to provide a complete solution to the problems I have noted. The jurisdictional structure of intellectual property law is too deeply imbedded in to be easily and the political realities of radical change to that structure. More likely, it will require a combination of approaches.

Looking from the top down, a publicly oriented approach to the problem of interjurisdictional research activity might be to amend the U.S. patent statute to explicitly clarify what law United States courts should apply in such situations. Such amendments to the patent statute, in response to jurisdictional needs, have occurred before. Prior to the United States accession to the WTO treaty on Trade Related Aspects of Intellectual Property (TRIPs), the U.S. statute barred nearly all foreign activity from consideration when determining the inventorship for a U.S. patent application. Accession to the TRIPs agreement required revision of the U.S. statute so that activity in any TRIPs country is treated as equivalent to activity in the United States [15]. Similarly, the prospect of inventive activity aboard the multinational space station prompted revision of the jurisdictional provisions of the U.S. patent statute — because outer space, by treaty, lies outside the jurisdiction of any nation, the provision of patent law aboard a spacecraft was unclear. The U.S. statute was therefore amended to apply the law of the country under whose flag a spacecraft module was launched [16].

A second welcome statutory amendment, which would go some way toward ameliorating the concerns outlined in this essay, would be a research exemption to patent infringement — essentially allowing researchers immunity from experimenting upon patented inventions. This amendment would allow research intended to improve or expand upon existing inventions, and would blunt some of the potential liability for accidentally engaging in development or re–creation an already patented invention. Patent critics and commentators have long called for such an explicit research exemption to the U.S. patent statute. Such provisions exist in the patent law of many industrialized nations, but the United States has only a judicially created exemption that is so narrow as to be of no practical use: for a use of a patented item to be exempt as “research,” there can be no commercial impact from the use [17].

But such statutory amendments, while helpful, are unlikely to provide a total solution to jurisdictional quandaries in cyberinfrastructure–based collaboration. Interjurisdictional conflicts are the result of legal incompatibility across nations, so that changes by a single nation cannot fully address the problem. As I have mentioned, multinational change has occurred in response to treaty agreements such as TRIPs, but such change as been incremental and hard–won after protracted negotiation. It is unclear whether legislators would be likely to commit the political capital necessary to make the necessary changes in the United States, let alone across multiple nations, when they are in a multi–player coordination game with their counterparts in those other nations.

 

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Engaging Private Ordering

Thus, in addition to public solutions, it will almost certainly be necessary to consider privately oriented approaches that can be implemented with or without the participation of government actors. The primary legal instrument for such private ordering is contract, perhaps supplemented by technological aids. This mixture of contract and technology has been adopted in other areas where intellectual property issues have made it desirable to secure open infrastructure — for example, in the areas of entertainment and software, where the response to unauthorized copying has been a combination of “shrinkwrap” or “clickwrap” licensing, coupled with technical protection measures. Commercial actors initially developed such standardized form contracts to streamline the costs of the contracting process. These “off the shelf” agreements have become ubiquitous in every kind of consumer transaction from automobile parking to cell phone service. Such form contracts are offered on a “take it or leave it” basis, with non–negotiated “boilerplate” or “fine print” terms that consumers seldom read, but which they may be required to honor if they manifest assent to be bound (Reichman and Uhlir, 2003).

Such mass market agreements are perhaps contracts only in name, sacrificing the traditional autonomy of contract for exigencies of convenience and expediency. Formation of such contracts does not involve bargained–for exchange, nor the classic “meeting of minds” that traditionally has characterized freely negotiated contracts. In many cases, the actual contract terms might not be read by the consumer, and in some cases actually cannot be read until after the item is purchased or used. Instead, these form contracts are based upon the manifestation of assent, upon some action taken or not taken by the consumer that indicates a general acceptance of the contract terms, known or unknown. In theory such limits are between the parties to the contract, but when the contract is attached to mass marketed products, purporting to bind millions of consumers, it essentially becomes a new form of property right (Radin and Wagner, 1999).

By combining such agreements with technological restrictions, it might for example be possible to secure access to the research infrastructure and designate a particular choice of law to those logging into the system. This approach would attempt to create a secure perimeter within which all participants had agreed to a certain intellectual property regime. However, this arrangement would tend to hamper open access to resources on the network — data and remote resources would not be readily available, as is the case with many information resources now developing on the Internet. The cumbersome requirement that participants work within a secured environment might itself tend to dampen collaboration and productivity.

Additionally, the standardized form contract on which such a system would rely may pose difficulties to the normative practices of research. Either as a substitute for, or as an addition to the control of information afforded by intellectual property rights, standardized licensing has been feared as a potential threat to open science (Reichman and Uhlir, 2003). Such licenses have been adopted in the context of laboratory research as standardized “letters licenses” for materials transfer in biotechnology research. While similar form contracts could be used to restrict the flow of information among online collaborators (Burk, 2000), they are difficult to police and enforce, and have a tendency to expand into voluminous “fine print” that is seldom understood, often ignored, and nearly always becomes overly restrictive.

An alternative arrangement might be to provide for such contractual agreements to travel with the data, rather than to attach themselves to people or to use of the general infrastructure. This private approach also relies upon standardized “off the shelf” contractual terms, but attempts to imbue the data with certain characteristics, such as association with a particular jurisdictional regime. This model draws upon experience in the open source coding community, which has turned form contracts to a similar purpose. Open source coders have attached to their products a type of standardized form contract, but form contracts with a particular twist: the contracts specify that as a term of copying, adapting, or re–distributing the software, the user must agree to maintain open access to the source code (McGowan, 2001). Thus the automatic license, in conjunction with copyright law, becomes an assurance of openness rather than of restriction.

These open source licenses come in a variety of configurations, with terms that may forbid commercialization of the code, or may allow commercialization, or may allow commercialization on certain specific terms — such as a requirement to pay a certain royalty, or a requirement to properly acknowledge the contributors to the final product. One particular form of license, known as “copyleft” licensing requires any change or improvement of the software to be made available to the public upon the same terms as received — in other words, the license has a “viral” character, attaching its terms to any products derived from the initially licensed software. Thus the terms of the contract effectively follows the information allowing relatively open access to the information, rather than access on conditional to contractual agreement.

 

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Open Source and Open Science

Some movement in the direction of this latter model has already occurred on current Internet infrastructure, as certain research projects have attempted to generate their own version of “open source patent” licenses (Cockburn, 2005; Rai, 2005). For example, such licenses govern access to the genomic data assembled in the governmentally funded “HapMap Project” which is building an informational haplotype map of human genetic variations. The database is freely available on condition that those accessing the data not file patent applications on information derived from the database, and that those accessing the data share information only with others who have agreed to the same terms. Additionally, users of the database agree that any patents they obtain on uses derived from information in the database will be licensed on terms that allow others continued access to the information. This license is aimed at limiting commercial use of a communal resource, and it incorporates the “viral” features of copyleft licensing.

Copyleft–style licensing has also been applied to physical materials, such as the biological materials made available via the Biological Innovation for Open Society project or “BIOS” (Boettiger and Burk, 2004). The BIOS project is intended to make publicly available certain biological research tools and techniques, and to attract contributions of further research tools. While the project organizers are not adverse to users of these tools filing patents on discoveries made by use of the tools, the intention is to preserve public access to the tools themselves. The danger to such access comes from patenting of improvements or modifications that users might make to the basic tools, encumbering the basic tools with proprietary claims. Internet–based electronic resources offer information about the tools and their use, and facilitate contact for physical transfer of the tools, but physical access is conditioned on agreement not to patent any improvements or modifications to the tools, and to make any such modifications or improvements available on the same terms. No such restrictions are placed upon products or discoveries generated by use of the tools; such products or discoveries can be patented without limitation.

However, it is critical to recognize that such application of the open source copyleft model to research data and other resources contemplates a different intellectual property system — the patent system — than the copyright system in which the licensing scheme was developed. This transfer of the open source “copyleft” model from the legal regime of copyright to that of patent presents several difficulties. As an initial matter, it is worth observing that the “open source” designation is something of a misnomer in the patent context. Patents require as a condition for the grant of exclusive rights a disclosure of the invention sufficient to allow one of skill to make and use the claimed invention. As a practical matter, this disclosure for software this may not always include source code; for biotechnology, the disclosure typically does include macromolecular sequence data. But in either case, the disclosure requirements of patenting should effectuate the goal of the “open source” movement to publish the technical data necessary to allow tinkering, improvement, and critique of the invention.

Thus, at least in theory, the patent system already entails a level of disclosure sufficient to allow the sort of access for tinkering and improvement envisioned by the open source and free software movement. But as a practical matter, such tinkering and improvement of the disclosed invention may be effectively precluded by the exclusive rights conferred under the patent. As mentioned above, some jurisdictions provide little or no room in the patent system for experimental use or reverse engineering. And, even if the details of an invention are already made accessible in the patent, the use of the term “open source” in this context may rather signal a philosophical commitment to “openness” or “free” science paralleling that of the free software movement.

Transfer of the copyleft licensing model to the patent environment also raises legal considerations not present in a copyright environment (Boettiger and Burk, 2004; Feldman, 2005). First, the nature of the exclusive rights — granted by copyright and by patent — are quite different. Copyright excludes unauthorized copying and related activities — activities that are triggered by access to the protected work. Such access serves as the trigger or activating event for the copyleft license — copying or adapting the open source code opens the copyist or adapter to a lawsuit unless the copying or adapting is done in accordance with the terms of the license. But patent rights exclude all uses of the claimed invention, even those conducted independently, without any access to the invention. In such cases, the infringing act would not serve to channel the infringer into compliance with the terms of the license, as there would be no knowledge, let alone manifestation of assent, to the license.

Second, the restrictions on further patenting that are incorporated into some “open biology” licenses may run afoul of the general public policy of the patent system. In the United States particularly, federal statutory and constitutional law encourages patenting, and licenses deterring patents may be preempted. Additionally, and perhaps more seriously, patents raise competition law considerations that are not necessarily present under copyright law. Certain types of patent licensing arrangements are subject to extra antitrust scrutiny, such as patent “pools,” in which participants cross license one another’s patents, patent “grant–backs,” which require licensing of technology developed with a patented tool back to the patent owner, and patent “reach–through,” which requires payment of royalties to a patent owner for products developed with a patented tool. Patenting restrictions in open biology licenses resemble these types of arrangement — for example, requiring products developed with “open source” biology tools to be licensed back to others on an “open source” basis — and so may raise antitrust concerns.

But the greatest obstacle to movement of “copyleft” licenses into electronic research collaborations may be the social disparity between the licenses’ original open source milieu and that of scientific research settings (Burk, 2005a). There are marked differences in the organizational and institutional networks of each community. Despite the some apparent congruence between the normative expectations in each community, academic science as currently practiced, particularly in industrialized nations, has a different and far more complicated profile than that of the open source community. The scientific community is older and more institutionally invested, with a decided organizational structure not present in open source coding.

Despite its profession of “openness,” academic science has an effectively hierarchical organization at the level of individual laboratories, as well as at the level of professional association. Graduate and undergraduate training in the sciences also contributes a distinct social sub–structure to the scientific community. Additionally, academic science is heavily subsidized by governmental grants, with the result that funding agencies may have interests and involvement in the disposition of intellectual property, both at the level of formal agency objectives and in the biases or preferences of peer review committees. Other formal institutions, such as institutional ethics review boards, university technology transfer offices, and peer–review journal publishers may also play roles not contemplated by the open source licensing system.

Such normative considerations may complicate the development of licenses that would ameliorate the legal conflicts issues in cyberinfrastructure. The success of the copyleft model in software development is due in no small part to strong buttressing of the license by the normative expectations of the community. In the broader scientific context, it is unclear whether the license will have the same status, the same social meaning, and the same success in a different community setting.

 

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Conclusion

Multijurisdictional legal conflicts are not new, but their frequency and magnitude are likely to increase dramatically as cyberinfrastructure bridges incompatible legal systems (Burk, 2005b). Indeed, the unique intersection of transborder conflicts, open science considerations, and intellectual property controversies will be characteristic concerns of cyberinfrastructure development. While there is unlikely to be any “magic bullet” solution to these problems a combination of public and private approaches may go far to easing the difficulties posed by intellectual property law in the context of transborder cyberinfrastructure. Indeed, the development of models and solutions for the role of intellectual property in cyberinfrastructure may leade to models and solutions for the role of intellectual property in research more generally. End of article

 

About the author

Dan L. Burk is Professor of Law at the University of Minnesota Law School.
E–mail: burkx006 [at] umn [dot] edu

 

Notes

1. 35 USC § 102(g).

2. 35 USC § 102(b).

3. 35 USC § 101.

4. 35 USC § 112.

5. 35 USC § 271(a).

6. General Agreement on Tariffs and Trade, Agreement on Trade–Related Aspects of Intellectual Property Rights, art. 9(1) (1994), Marrakesh Agreement Establishing the World Trade Organization, Annex 1C.

7. 35 USC § 102(a).

8. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 75 U.S.P.Q.2d 1763 (Fed Cir. 2005).

9. AT&T v. Microsoft, 414 F.3d 1366 (Fed. Cir. 2005).

10. 35 USC § 116.

11. 35 USC §§ 102(g), 104.

12. 35 USC § 271(e).

13. Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002).

14. See RESTATEMENT (SECOND) OF CONFLICT OF LAWS § 6 (1971).

15. 35 U.S.C. § 104.

16. 35 U.S.C. § 105.

17. Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002).

 

References

S. Boettiger and D. Burk, 2004. “Open Source Patenting,” Journal of International Biotechnology Law, volume 1, pp. 221–231.http://dx.doi.org/10.1515/jibl.2004.1.6.221

D. Burk, 2007. “Intellectual property in the context of e–science,” Journal of Computer–Mediated Communication, volume 12, number 2 http://jcmc.indiana.edu/vol12/issue2/burk.html.http://dx.doi.org/10.1111/j.1083-6101.2007.00340.x

D. Burk, 2006. “The Problem of Process in Biotechnology Law,” Houston Law Review, volume 43, pp. 561–590.

D. Burk, 2005a. “Bioinformatics Lessons from the Open Source Movement,” In: H. Tavani (editor). Ethics, Computing, and Genomics: Moral Controversies in Computational Genomics. Sudbury, Mass.: Jones and Bartlett, pp. 257–254.

D. Burk, 2005b. “Law as a Network Standard,” Yale Journal of Law. & Technology, volume 8, pp. 63–77, at http://research.yale.edu/lawmeme/yjolt/files/20052006Issue/fall05-burk.pdf, accessed 27 February 2007.

D. Burk, 2000. “Intellectual Property Issues in Electronic Collaboration,” In: S. Koslow and M. Huerta (editors). Electronic Collaboration in Science: Progress in Neuroinformatics, volume 2. Mahwah, N.J.: Lawrence Erlbaum Associates, pp. 15–44.

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Intellectual Property and Cyberinfrastructure by Dan L. Burk
First Monday, volume 12, number 6 (June 2007),
URL: http://firstmonday.org/issues/issue12_6/burk/index.html





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