Is the patenting process at odds with open science?

We’re sharing perspectives on science culture, as part of our “Taboos and tricky topics” series. We’ll be including perspectives from people in a range of roles and career stages, and from a range of backgrounds. 

In this article, Anne-Marie Conn, who participated in session 5 of this series, entitled “How do we tackle the conflict between intellectual property and the drive towards open science?”, shares her thoughts. 

You can watch the full session here. 

What is open science? ChatGPT suggests that it is a “movement” towards making scientific research and data more accessible. Terms like “open access”, “open data” and “open source” seem to crop up as sub-categories. 

I’d like to consider the question from an intellectual property (IP) angle. As a patent attorney, I help clients protect their own IP; and help them to establish freedom to operate in view of others’ IP.   

In the 1920s when Alexander Fleming discovered penicillin, he made a deliberate choice to not seek patent protection. This is sometimes pointed to as a model of philanthropic behaviour. 

A problem is that the world has changed a lot since then! In the meantime, the sad tragedy of thalidomide (and other events) has/have led to far stricter constraints around safety and efficacy. This is a great thing, keeping patients safer.  However, it does mean that bringing a drug to market is orders of magnitude more expensive, more likely to fail (thus a higher risk investment) and logistically complex than it was a hundred years ago. It would be very difficult to incentivise drug development nowadays without the offer to recoup some of the risk and cost through a patent monopoly. 

Similar considerations apply in other industries, even if the pharmaceutical industry is the leading example. The cost of bringing a product to market in the world as it currently stands is simply very high. For start-ups, this makes it difficult to bring a product all the way to market (or to exit with a sale at a suitable juncture) without investment; and investors typically want to see a patent application (or more than one) filed before they will take that risk. They know that even if you don’t believe in or feel especially enthusiastic about patents, your competitors surely do. 

Interestingly, though, holding back from enforcing a patent - once you have obtained one - is common. The value of a patent rarely lies in being able to stop a potential infringer entirely. Time and again, patents are treated as bargaining tools. Licences may be agreed under mutually beneficial terms. There is considerable flexibility to carve out geographical areas, fields of use, and various other terms. In a sense, this is open science. By patenting an invention, you are not committing yourself to enforcing your patent: you are retaining the option to bargain (sometimes rather creatively!) with third parties, e.g. an investor or a competitor.  

Of course, the nature of the patenting process may make it hard for academics to both publish (often so necessary to move upwards in academia…) and also secure their intellectual property. There are ways to mitigate this tension. It is not entirely true that one can never talk about an invention which is the subject of a patent application. It is just extremely important to not do that until the time is right, and to disclose only certain things in certain terms. Some countries go so far as to provide patent “grace periods” to help inventors with this issue. A grace period effectively provides an inventor with a period of time in which disclosing their invention does not necessarily rule out a later patent filing. Although there are nuances to this, it presents a potential compromise and it exists in more than one country around the world, most notably the US and Japan, although not in Europe. Sometimes, it can provide the saving grace by which to obtain patent protection in at least a few territories following an inadvertent disclosure of an invention.