Patents and Biocontrol Technology

Dick Cahoon
Cornell Research Foundation
Cornell University
Ithaca, NY 14853

(prepared from the videotaped presentation*)

Patents and other types of intellectual property are vehicles for getting technology into the marketplace and having people use it. Since I get a chance to see everybody's technology, from simple to complex  - transgenics, apparatus, etc., I'm in a position to know the broad spectrum of work that is being done at Cornell.

Intellectual Property

This is a broad term and it includes such things as plant variety protection and sexually reproduced plants, copyrights, proprietary biological material, trade secrets, and trademarks.

Patents were established in the US Constitution and were patterned after the United Kingdom patent law of the l600's which gave creators a limited monopoly on the use of their inventions with the idea of stimulating or providing incentive for use of the invention. The U.S. Patent Act of 1790 followed. It is a simple document and states three requirements for patented material.

Patentable subject matter
Although some things are not patentable, such as ideas, themselves, novel ideas may be patentable if they are reduced to actual or constructive practice.

1. Actual practice: to build, test, create something.

2. Constructive practice: to create something on paper which has been reduced to practice because of the patent application.

Unpatentable subject matter
Products of nature are not patentable. You cannot get a patent on a naturally occurring organism. It seems illogical that you cannot patent a product of nature and yet you can get a patent on the gene, but this is the case. You cannot get a patent on the discovery of a particular organism, although you may be able to get a patent on the use of that organism in a particular way. There has been lots of controversy and debate on this subject.

Patents are Property
Patents are definable and are very specific. They can be bought, sold, traded, and willed. Here at Cornell, patents are owned by the University, and we never give up ownership of our patents. We sometimes rent them, or in the jargon of the business, license them.

The most important concept I have to give you today is probably this one: Patents are a negative right. This issue causes more problems for university researchers than anything else. When you own a patent, this does not give you the right to practice your own invention. It only gives you the right to prohibit others from making, using, and selling your invention. I.e., when you practice your invention, you may infringe on the rights of others, and others may be able to stop you.

Types of Patents

Design: this is never used at Cornell.

Plants: Cornell does patent its plants - grapes, apples, strawberries, etc. The US is the only country that allows a patent on sexually propagated varieties of plants.

Utility: the patent most of us think about.

Requirements for Patentability

Novelty: It cannot have existed, been taught, previously.

Usefulness: It must have some utility.

Non-obviousness: It cannot be obvious. This can be a tough requirement. It can be said that, of course it is obvious once you read this article from Peru and that article, from an entirely different discipline, from Korea.

Due diligence: The creator must pursue the idea and not just sit on it for years.

Originality of inventorship: Only those who have contributed intellectually may be on the patent application. It is not the same as authorship.

Full disclosure: All secrets of the invention must be disclosed. It is the opposite of trade secrets. A patent is a bargain with the federal government in which the government says, "You teach the country how to use this invention properly and in return, we'll give you a limited monopoly on the use of it for 20 years."

Other Patent Stipulations

Patents are national. US patents are not recognized in other countries and a foreign country's patents are not recognized here.

A patent deprives the public of nothing that it freely enjoyed prior to the grant of the patent. A patent adds to the sum of human knowledge and encourages further interaction.

Research using patented material is an infringement of rights, although researchers are usually not sued because they have no money. It appears this will soon change. There are indications that companies are going to, gently at first, remind us of this infringement, and possibly they will make it a little more difficult for our researchers.

A patent application includes a patent number, the date issued (a patent has no power until the day it is issued), the inventors, an abstract, the background, what it is, drawings (almost always), and the boundaries of the patent starting with the claims of the patent owner. If someone doesn't infringe 100% of the claims, the patent is not infringed.

Intellectual Property at a Research University

Federal mandate. There is a federal mandate requiring universities to pursue a patent if an employee makes an invention on a federally funded project.

Industrial expectations. More and more, companies funding research are expecting to receive benefits, such as any patents. It becomes a negotiation. How much are they putting in, what do they want, what are the rights they will get? Cornell does not sell its patents; it licenses them, and we can license exclusively if it makes sense so that we develop a good relationship between funding companies and our Cornell researchers.

Societal expectations of universities. For good or bad, universities are now expected to be engines of economic development. Patentable technology can help universities fulfill this role.

Global shifts in economic structures.

Rise of entrepreneurism and personal incentive. Twenty years ago it was entirely inappropriate for universities intellectuals to think of personal incentive. This has changed remarkably, and we now see companies arising almost within universities. There is a lot of debate about the propriety of this.

Decreased research funds and related opportunities. Patentable technology can be used as a carrot and a stick: if there is a potential sponsor for university research and we have a patentable technology, we can say to the potential sponsor, "If you fund Professor X's research at a reasonable level, we will give you some patent rights. If you don't want to do this, we can give these rights to your competitor in return for funding."

Effectiveness in technology transfer. Intellectual property is a keystone for building technology-transfer-relationships between universities and their researchers.

Slide: First Cornell patent

Slide: Cartoon

Intellectual Property and Biocontrol Technology

Biological inventions have been around for a long time. Louis Pasteur got a US patent on yeast culture in 1873. The first biotechnology patent was in 1963. As for types of biological control patents, these have been patented: genes, traps, methods, gene regulation, and microbial cultures. U.S. Supreme Court Justice Warren Burger said the category included, "everything under the sun made by man."

In 1994, there were almost 100,000 U.S. patents issued, about 1900 per week. Already in 1996 [April 11] there have been over 21,000 patents issued, or about 2600 per week. This is a lot of activity.

Relevant Issues

Some disconcerting things to think about regarding intellectual property and biological control technology:

Legal and business encroachment on the freedom of research and development. An issue that will not go away, although there are ways to manage it and turn it to our best advantage.

The quagmire of conflicting patents. Not for the faint of heart.

The encumbrances on technology and patents. More and more I'm realizing that our researchers are not aware that they may be using someone else's patented technology. They should be aware of using such technology, for example, patented biological material.

Patent myths. Examples are the neem controversy (see below) and the idea that getting a patent means one will get a lot of money when, in fact, most patents are never actually marketed.

The Neem Controvery: An example of confusing rhetoric

In this case, Grace patented a formulation of neem extract that is shelf stable and was said to have "wrongfully usurped an age-old biological process, blocking out millions of Indian farmers to reap windfall corporate profits off native invention." This claim received a lot of media attention and confused and angered many people.

In actuality, Grace's patent does not cover the plant, the seed, the natural extracts, or the active ingredient. Grace holds no patent in India, isn't applying for one, and the only thing Grace could prevent is Indian neem farmers from using its formulation within the US.

With this in mind, if anyone has any questions about anything they might hear regarding patents, please contact our office.

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