Reinventing discovery: patent law's characterizations of and interventions upon science.

• Author: Simon, Ariel

This Article concerns the sway of intellectual property law over scientists and their institutions. Patent monopolies encourage scientists and innovators to invent, but we rarely ask "as opposed to doing what?" I argue that the "what" is, at least some of the time, "basic" (nonpatentable) scientific research and discovery. This Article questions the viability of the discovery/invention distinction in patent law and considers the consequences that it has long had on the scientific enterprise.

This Article has four aims: (1) to re-engage a once-vibrant conversation about what, if any, property rights should inhere to "basic" scientific research products at the margins of existing categories of intellectual property law; (2) to contrast patent law's consequential and idiosyncratic characterizations of "basic" and "applied" science with those of other disciplines; (3) to highlight the distortions that patents foist upon the scientific enterprise by attaching monopolies to some research products but not others--affecting the distribution of scientific talent, the focus of research, the investment priorities of public and private actors, and so on; and (4) to reconsider the government's approach to basic-research funding. A view of patents as a legal construct layered upon science, rather than a default extracted from science, alters the political and legal status of "basic research" and "discovery." In this view, public funding of basic (nonpatentable) research becomes as much a matter of mitigating market distortions and treating likes alike as of promoting civic largesse or economic growth.

INTRODUCTION I. THE LEGAL CANON: MAN AND NATURE A. Economic Principle, Ontological Categories B. Law's Astrology 1. A Proliferation of Tests 2. Laws of Nature, Laws of Men C. Accounting for Science 1. Laws in Nature a. The Pragmatists b. Beyond Verification 2. Science in History 3. Reconsidering Laws of Nature 4. An Unsustainable Principle II. OBJECTIONS TO A SCIENTIFIC PROPERTY RIGHT A. Post-War Context B. Objections to a Scientific Property Right: An Impractical Right C. Objections to a Scientific Property Right: An Undesirable Right 1. The (Ir)relevance of Money for the Starving Scientist 2. Norms of Science, Under Assault III. DEFAULTS AND INTERVENTIONS: RECONSIDERING SCIENCE IN INTELLECTUAL PROPERTY LAW A. A Default that Is No Default 1. Science as a Vocation 2. Patents and Distortions B. If Scientific Research Is a Form of Property 1. Private Property, Just Compensation 2. A Takings Perspective C. Political Reconstruction of Basic Research 1. Overvaluing or Undervaluing? 2. Views of Basic Research D. A Brief Review CONCLUSION INTRODUCTION

Science discerns the laws of nature. Industry applies them to the needs of man.

Rotunda, The Museum of Science and Industry, Chicago

Chicago's Museum of Science and Industry embodies America's heroic vision of science. Its space shuttle, U2 submarine, house-sized heart, and coal mine with a doomed animatronic canary are grand in scale and rich in meaning. The museum's exhibits depict triumphs of the highest virtues of our scientific history and technological present: equanimity, collaboration, and reverence for nature. Gazing into that rotunda as a child, one's choice comes down to a career of revelation or one of committed humanism; the drudgery of gel electrophoresis is only revealed years later.

The delineation between decrypting nature and fashioning it to meet needs is deeply rooted. Perhaps that is due to slogans filling museum rotundas; perhaps it is because our intellectual property regime partitions research along such lines. Either way, it is an imperfect intuition. Science and industry are tightly bound. (1) Industry massively invests in basic research. (2) Tenured researchers and government scientists spend much of their time, and generate much of their livelihood, attending to commercial interests. (3) Even the quasi mystics of scientific history--the alchemists and string theorists--did science for the sake of very concrete, human goals. (4)

Science and industry, discovery and invention--these categories are not of science. They were not, at some critical moment, plucked from Platonic ether. They are deeply human and partial categories that reflect particular accounts of what we think we do when we do science, a legal system that relentlessly parses endeavors, and the contours of our political economy. The reality of science is far messier and far less categorical. The lines between research and application, between man's place in nature and study of nature, have ever defied glib summary. Entire disciplines study the sociology, history, and philosophy of science. (5) How we think and write about science is a flashpoint because of what it may signal about weighty topics like truth and certainty. (6) Most of these discussions take the form of academic abstraction, drawing popular attention only with high-profile Sokal Hoaxes or intermittent storms over the difference between scientific theory (say, regarding the descent of man through time) and scientific fact. (7)

Given the relative obscurity and frequent absurdity of such spats, it is easy to lose sight of the law's deeply consequential--and equally idiosyncratic--account of science. Law defines the epistemic content of evidence, as well as the legal, political, and even scientific status of entire forensic disciplines. (8) It delineates where empirics end and faith begins in classrooms. It also frames the incentives attached to certain forms of research. (9) In each of these contexts, as law characterizes how science is done, it also shapes how science is done. These interactions--particularly those arising from doctrines of patentable subject matter--are the subject of this Article.

Some have criticized law's approach to science for relying on archaic and even romantic conceptions of what science is and what it does. For instance, critics have assailed Daubert's standard for the admissibility of scientific evidence (10) as an anachronistic hodgepodge of irreconcilable principles. But Daubert at least possesses interdisciplinary reference points; that is more than we can confidently say about intellectual property law's vision of science, as embodied in our patent system.

Patent law distinguishes between two products of research: discoveries and inventions. All patentable inventions are either discoveries or creations, but not all discoveries and creations are patentable inventions. (12) These categories are foreign to how scientists talk about and conduct their business, except when they discuss patent law and the commercial implications of their research. What is and is not patentable is in no way coextensive with the boundaries scientists otherwise, let alone "naturally," use to identify endeavors within their fields.

Legal literature defends its distinctions by pointing out that scientists participate in open, productive, and collaborative basic research despite the lack of attendant intellectual property protection. Legal academics describe this collaboration as a "norm" of basic research. Yet this norm did not emerge in the absence of legal, economic, and political frameworks, but specifically in light of them. The legal literature speaks of science as if it were an isolated ritual, as if the orienting goal of our patent system--encouraging invention--was wholly superfluous, and as if attaching monopolies to some research products but not to others has little impact on a scientist's career choices or research priorities or, more broadly, the trajectory of scientific research. Law, in short, either disregards or denies altogether the untidy consequences of its interventions upon science.

This Article reconsiders the discovery/invention distinction, borne out at the boundaries of the legal doctrines of patentable subject matter, as well as the implications of that distinction for the scientific enterprise. If there are consequences in the type of research projects that scientists pursue, in the distribution of research talent across disciplines, or in the funding priorities of our body politic, then we should want to base them on something other than tenuous constructs of legalistic metaphysics. We should aim to acknowledge, if not altogether avoid, legal mischaracterizations of science shaping the enterprise and trajectory of science itself.

I argue that the discovery/invention distinction is analytically tenuous--untethered to scientific theory or practice and imperiled by the trajectory of legal opinion. Yet it is a deeply consequential construct. Too often, lawyers portray the patent system as somehow incidental to the scientific enterprise. But what would inventors be doing if they were not inventing? We hope to encourage invention as opposed to what? Basic research thrives without intellectual property protection compared to which hypothetical alternative? By partitioning scientific research products into two categories--only one of which we protect as intellectual property--patent law almost certainly affects the distribution of scientific talent and the focus of research. Even if these effects are marginal, they are worth discussing because they remain underacknowledged.

Even if there is no convincing reason, in principle, to distinguish unpatentable discoveries from patentable inventions, there may be practical reasons to do so. Scholars have rehashed this discussion time and again since the First World War. I re-engage the conversation not to concoct an ambitious solution--say, a novel "scientific property" right--but to reconsider the consequences of the law's bifurcated vision of science. These consequences include distortions in the scientific enterprise that encourage researchers to do some things rather than others and chronic instances of legal over- and underinclusion when we label research products "property" or "not property." The former consequence raises important questions of...