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Driven by the aspiration to promote innovation and to minimize the transaction costs for sharing and reusing fruits of research, Science Commons was born in 2005 as a project of Creative Commons, a nonprofit organization devoted to devising and administering licenses to creative works under an alternative paradigm to typical copyright licenses-the so-called “some rights reserved” licenses. The concept of “the Commons” is resonating widely in the global research and “authorship” communities; its potential applications in the technology and commercial worlds warrant the attention of the intellectual property (IP) mainstream. The initiative of the Commons-be it Science Commons as it relates to science and patenting, or Creative Commons as it relates to works of authorship and copyright-may be seen as disrupting the rubric of the existing IP protection and licensing regime by promoting certain alternatives to the IP norm. In the development of modern economies, research and commercial enterprises have relied upon the existing IP regime to build as well as leverage their competitive edge in relevant technology spaces and product markets. It is conceivable that in the coming decades, however, the philosophy and implementation of the Commons will increasingly influence diverse technology and industry sectors on a worldwide scale. Thus, today’s technology companies and institutions are well advised to begin considering the trend of the Commons, and assessing the implications of such a trend on their established IP policies and strategies. To that end, and with particular relevance to technology industries and other creative fields, one may inquire into the effect of Science Commons and Creative Commons on the traditional framework of IP protection and technology transaction. That is, would the “Commons” expand and complement that framework; or would it instead thwart and burden it? In answering these questions, it is useful to survey the varied theoretical underpinnings and practical applications of the system of the Commons in contrast to that of traditional IP. The notion of the Commons is analogous to that of the public domain. It is understood to encompass undivided resources jointly held by a plurality of entities or individuals-such as the public at large-and generally available for use by everyone without special consent or permission. Examples of the Commons include, among others, outer space, international waters, public streets, textbook knowledge in science and engineering, and myriads of unencumbered Web postings in the public domain. For the sharing and reuse of information in science and technology and the common enjoyment of cultural and artistic creations, the Commons imposes little, if any, transaction cost. However, the Commons presents a familiar problem known as the “tragedy of the Commons,” which denotes the phenomenon that widespread public use of the Commons coupled with the missing mandate for upkeeping and replenishment often lead to the inevitable depletion of the Commons. Although some believe that this problem may not be of concern in the IP arena, since knowledge once discovered will not be depleted, to the extent that knowledge is affixed and carried on tangible, finite media, the up-keeping and replenishment would remain an issue. Moreover, it is open to question whether the free and open access to the Commons presents a preferred mode for the efficient utilization of its resources. Somewhat opposite to the tragedy of the Commons is the peril of “anticommons,” an in-depth analysis of which Michael Heller and Rebecca Eisenberg offered in their 1998 article “Can Patents Deter Innovation? The Anticommons in Biomedical Research,” 280 SCI, 698. The anticommons illustrates the observation that overly fragmented and distributed property rights-which could result, for example, from an increased number of patents covering small, incremental improvements in a particular field-tend to elevate transaction costs for further research and commercial exploitation. For example, the exorbitant cost of negotiating and dealing may yield a prohibitively low projection of return on investment for a company, thereby forestalling an otherwise productive collaboration that it seeks. Similarly, excessive, overlapping copyright claims may stymie a contemplated new production or compilation. Therefore, the anticommons may negatively affect the collective efficiency of innovation and productivity in individual industries and across the related fields. There is, therefore, a practical need for aggregating fragmented patent and other IP rights such that patent and other IP assets can be more efficiently utilized. In this connection, it is unsurprising that patent pools and voluntary industry standards have proven to be effective in certain technology spaces in promoting collective profitable ventures in place of costly exclusionary battles of infringement lawsuits. The MPEG-2, MPEG-4 Part 2 and H.264 video coding standards are among the well-known examples of successful patent pools. Alternative licensing formats To Creative Commons and Science Commons, the solution to the need for aggregating fragmented IP rights and facilitating general access to IP is to “reclaim” the Commons. See Lawrence Lessig, “Reclaiming a Commons,” Keynote Address at The Beckman Center’s “Building a Digital Commons,” May 20, 1999, available at http://cyber.law.harvard.edu/events/ lessigkeynote.pdf. Lessig serves as chairman of the board of directors of Creative Commons.
INTELLECTUAL PROPERTY Counterfeits: Beyond the Knockoff FTC’s recent ruling in ‘Rambus.’ Cases decided since ‘Philips.’ Open-source software disputes. Emergence of Science Commons. Global patent-filing options. Keeping inventive-act records.

Specifically, Creative Commons and Science Commons strive to propagate an alternative licensing mechanism by which literary and artistic works and results of scientific research, among other things, may be available for sharing and reuse more easily and with lowered transaction cost. Detailed information can be found at http://creativecommons.org/ and http://sciencecommons.org/ , respectively. For one thing, this solution expands its reach beyond merely members of a patent pool consortium. Thus, it is likely to lay the foundation for developing and maintaining a modern “Commons”-so-called “IP conservancies.” Importantly, under Creative Commons licenses, authors do not relinquish their copyright. Rather, those licenses modify the default “all rights reserved” copyright regime and prescribe a “some rights reserved” system. In brief, Creative Commons has available four standard licenses: attribution, which permits free access and use so long as attribution is given; noncommercial, which permits free access and use for noncommercial purposes only; no derivative works, which permits free access and use only of verbatim copies; and share alike, which permits distribution of derivative works only under identical license terms. These licenses can be used separately or in appropriate combination. Those standardized, and fairly straightforward, licensing terms can significantly simplify access and use of creative works, thereby minimizing associated transaction costs. At the same time, the rights and control retained under those licenses operate to safeguard the integrity of the works and enable the authors to enforce their license terms if necessary. Thus, unlike an unabridged public domain or a rigid framework of protection and sharing, Creative Commons provides a simplified system balanced with desired openness as well as control. As structured, this system appears capable of guarding itself against both the tragedy of the Commons and the anticommons. Therefore, it will likely complement the traditional approach for copyright licensing. In the commercial world, especially where business considerations mandate minimal transaction costs, it is advisable for companies to adopt such a license scheme. Will it work for patents? Turning to Science Commons, which relates more closely to patents and technology transactions, it is less clear that the proffered alternative will successfully complement the traditional framework of patent licensing. For example, one of several Science Commons’ projects is a Biological Material Transfer Project, which aims at standardizing material transfer agreements (MTAs) in order to facilitate sharing of basic research tools and materials such as antibodies, plasmids, clones, probes and cell lines. Frequently, those materials are heavily encumbered by layers of interlocking patent rights and proprietary know-how. Not to mention the thorny questions about who will own the resulting research findings, and what happens if royalties are collected down the road from commercial applications of those research findings. Negotiation of an MTA to resolve all of those issues may take many months or even years, leading to elapsed research opportunities. Apparently recognizing this shared problem, nearly 300 universities and other research institutions became signatories to a Uniform Biological Material Transfer Agreement (UBMTA) in 1995. See www.autm.net/aboutTT/aboutTT_umbtaSigs.cfm . However, a single master UBMTA has not proven to be a “cure all” in the world of biomaterial transfer. Many obstacles remain, chief among them the diversity of the materials-in nature, in the rights attached and with respect to the point of application. Depending on the different nature and different rights involved, a single MTA may be required to deal with many different issues. Moreover, if the materials are intended to be included in a vast library for the screening of useful clones, the point of application may be too far removed from potential commercial products to raise any contentious royalty claims. By contrast, if the materials are well-characterized functional peptides, the point of application may be close enough to potential therapeutic or nutriceutic products in the event further research uncovers any. In the latter scenario, it is likely that one or both parties will demand that the terms for prospective IP ownership and royalty or other compensation structures be negotiated and included in the MTA. The foregoing is merely an example to illustrate that under the aegis of MTAs lies a variety of transactions that deal with a diverse range of issues. In fact, it is not uncommon that an MTA captures in essence a joint development and commercialization agreement, a clinical investigation agreement or a cross-licensing agreement among two or more parties. Put differently, the title of MTA is unlikely to set out a clean measure of requisite terms for an agreement. Consequently, true standardization for biomaterial transfer may be quite difficult, if not impossible. To the extent a set of standardized terms may be conjured up to represent a perceived core of an MTA, as can be seen in the UBMTA, the utility of such standardized terms is likely diminished, given their limitations. It has been suggested that a set of “standard” options may be developed to supplement a core agreement such as the UBMTA, in order to cover in toto all aspect of an MTA in a given context. In theory, this approach may be effective; however, the complexity of the conditions and the multiple inter-dependences among parties’ various considerations may remain elusive to a one-dimensional standardization approach relying on one set of options pluggable to a master agreement. Such an approach may be risky, considering the cost of fixing a draft agreement that does not capture the parties’ intentions and the dire consequences of any ambiguities or inaccuracies in the agreement at the time of performance. Therefore, care must be used in implementing any standardization scheme in these areas, so as to avoid unnecessarily burdening the general patent licensing and technology transaction process. Semantic Web technologies The difficulties notwithstanding, certain technical initiatives at Science Commons may provide an avenue towards some future answers for a truly streamlined paradigm of technology licensing, with lowered transaction cost. For example, Science Commons is exploring using the Semantic Web (SW) technologies in its projects. SW can be thought of as a system of machine coded knowledge depositories. It consists of a set of common standards for identifying and describing concepts and relationships. Such standards support republishing or porting the information in a format that can be processed by software, including, e.g., search engines, browsers, data analysis and statistical tools, and text mining engines. SW has the potential to extend to a variety of subject matter areas, whether science and engineering disciplines, or history, art and politics. More detailed information about SW can be found at www.w3.org/2001/sw/ . Applied in the context of the Commons, SW provides an enabling technology for standardizing or machine coding complex licensing terms and considerations. Unlike the aforementioned one-dimensional approach with one set of options plugged into a master agreement, a potential solution empowered by SW would be multidimensional, and would offer added freedom to deal with the complexity of a typical licensing deal. In sum, Science Commons offers promising prospect to ease the negotiations and dealings for technology and material transfers, and to lower the associated transaction costs. It remains to be seen whether a viable solution may be developed, and ultimately embraced, by the research and commercial worlds. Undoubtedly, however, the initiatives championed at Science Commons and Creative Commons merit the close attention of today’s research and commercial enterprises and their IP counsel. Qin Shi ( [email protected] ) is an IP associate in the East Palo Alto, Calif., office of Howrey. Her practice includes IP litigation, technology transaction and life sciences.

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