Intellectual Property Lessons from Computer Software for

Biotechnological and Nanotechnological Innovation

Dennis S. KarjalaJack E. Brown Professor of Law

Sandra Day O’Connor College of LawArizona State Universitydennis.karjala@asu.edu

What Is Intellectual Property?

• Information is usually free, once created– Yesterday’s football scores– Recent developments in string theory– Telephone numbers

• IP is “propertized” Information– “Property” means the right to exclude others from using the information

– For published information, there can be no right of exclusion, absent statutory grant

Types of IP

• Patent– Protects “nonobvious” technological advances

• Copyright– Protects the “expression” contained in artistic, literary, and musical

works– Databases are protected in the U.S., if at all, by copyright in their

creative “selection or arrangement”

• Trademark– Protects investment in names or symbols signifying the origin of goods

or services

• Trade Secret– Protects unpublished information valuable to a business

• Rights of Publicity– Protects the right to use the names or images of famous people in

commercial advertising

Patent and Copyright

• These two venerable statutes seek to accomplish the same end: Protect the fruits of intellectual creativity for the purpose of encouraging the production of intellectual works

• They go about their tasks, however, in very different ways

Patent

• Patents issue only upon formal application and after examination by a skilled examiner for “novelty” and “nonobviousness”

• Patent requires a complete specification of the invention

• The scope of patent protection is defined and narrowly limited by the claims

• The term of patent protection is 20 years (from filing)

Copyright

• Copyright arises automatically upon fixation• The scope of copyright protection is defined by the

vague idea/expression dichotomy• Copyright infringement is determined by the equally

vague “substantial similarity” standard• The term of copyright protection endures for 70 after the

death of the author (or 95 years for so-called “works made for hire”) – in other words, the term is practically perpetual

Why These Differences?

• There MUST be something in the nature of “patent subject matter” that distinguishes it from “copyright subject matter” that justifies such radically different treatment

• Statements like “Patent protects technology” or “Patent protects function” were enough to distinguish the art, music, and literature that were the traditional subject matter of copyright

Digital Technology

• Computer programs are functional under almost any definition

• Their treatment as copyright subject matter, showed the need for a more careful breakdown of the two types of subject matter

Confusion

• “[F]unctionality" is not a general bar to copyright protection. Traditionally, copyright subsists in original works of authorship whatever the purpose of the work, so long as a multitude of means of achieving the "purpose" remain available. Jane C. Ginsburg, Four Reasons and a Paradox: The Manifest Superiority of Copyright over Sui Generis Protection of Computer Software, 94 Colum. L. Rev. 2559, 2566 (1994)

• [T]oday’s copyright law protects a wide

variety of disparate ‘writings,’ including fact compilations, dictionaries, code books, encyclopedias, advertising, and ‘how to’ instruction manuals, that, like many computer programs, have a primarily utilitarian rather than aesthetic, entertainment, or educational purpose. Arthur R. Miller, Copyright Protection for Computer Programs, Databases, and Computer-Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 986 (1993)

• Utility does not bar copyright

(dictionaries may be copyrighted), but it alters the calculus. Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807, 819 (1st Cir. 1995)(Boudin, J. concurring)

First Cut at a Meaningful Distinction

• [A] ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. U.S. Copyright Act, section 101

• Treating “useful articles” under the Copyright Act as “functional” for purposes of defining the subject matter distinction (with computer programs as an exception) captures much of the traditional law.

• Maps, dictionaries, etc., are not functional and remain under copyright, where they have always been

Elements Common to Software, Biotech and Nanotech

• Common element is, or may be, functionality that is difficult or expensive to design but may be cheaply and easily copied

Software• Vulnerability of software to such

misappropriation (cheap and easy copying) was recognized very early in the debate (CONTU)

• Much complex software contains no patentable invention - it is simply the complex product of essentially standard methods of software system design

• Early court decisions denied patents even for functional software innovation

• In general, see Dennis S. Karjala, A Coherent Theory for the Copyright Protection of Computer Software and Recent Judicial Interpretations

, 66 U. CINCINNATI L. REV. 53 (symposium issue 1997)

Biotech Innovation

• To the extent biotech innovation is based on DNA sequences, it is closely analogous to software

• Some early commentators (Gilbert, Burk) saw little or no problem in taking the same approach for DNA sequence information that was taken for software – if s/w functionality can be c/r protected, why not functional DNA-sequence information?

Biotech Patents

• Much of the pressure was removed from applying copyright by the broad approach of the courts to the patent protection of DNA sequences - even those that occur naturally in humans or other living organisms

• Moreover, until recently there were few easy ways to predict the function that a given DNA sequence would perform simply from knowledge of the sequence itself

• This meant that functional design of useful DNA products did not follow the systems engineering approaches that developed for computer software

• Much of the “invention” in DNA-based products and methods was in discovering the function of a particular naturally occurring sequence, isolating the sequence, and figuring out how to put it to practical use

• It would have been difficult to claim “authorship” or “originality” in these naturally occurring sequences within the meaning of copyright law

Systematic Biotech Design

• MIT has created the Registry of Standard Biological Parts

• The goal is a set of “well-specified, standard, and interchangable biological parts” as a “critical step towards the design and construction of integrated biological systems.”

The Registry• It now contains 3200 genetic parts that

can be mixed and matched to engineer biology, organized by a catalog

• Eventually, the Registry will simply be a storehouse of DNA-sequence information and specifications that can be fabricated and “executed” within a cell (Kumar & Rai, 2007)

• Synthesis platforms, analogous to operating systems, will likely follow (Kumar & Rai, 2007)

IP Implications

• If biotech design reaches the point at which new products are simply the complex combination of a wide variety of functional parts taken “off the shelf,” it begins to resemble the object-oriented forms to which software design eventually came

• If these parts are put together in more or less standardized ways to achieve a given function, and if a person having ordinary skill in the art (PHOSITA) of biotech design could achieve that function based on that skill, patents may no longer be available

• Such biotech innovation will be vulnerable to misappropriation to the extent that the design can easily be determined from use or analysis of the product (as is the case for computer software)

• Over 15 years ago I predicted that we might eventually reach this stage and that some sort of antimisappropriation approach would then be called for: Thinking Beyond Patents for the Protection of DNA-Sequence-Related Inventions (1995)

Nanotech

• IP issues in nanotech have not yet reached anything like this– Indeed, most nanotech products that are

actually on the market may not even make use of the major factor that distinguishes nanotechnology from everything else: the dramatic changes in physical properties that often occurs at the nanoscale

• True nanotech involves manipulation of matter at the nanoscale level

Nanotech Examples

• The prefix “nano” means 10-9, so a nanometer is one-billionth of a meter– Diameter of a human hair is roughly 10-5 meters, the

DNA molecule is on the order of 10-7 meters (100 nanometers), and individual atoms are less than 1 nanometer

– Nanotechnology deals with matter on length scales roughly one to 100 nanometers

• A rough definition of nanoscience is the study of phenomena and manipulation of materials at atomic, molecular and macromolecular scales, where properties differ significantly from those at a larger scale

• Nanotechnology involves the design and production of devices and systems by controlling shape and size at nanometer scale

"IBM" atoms (1990)

•      

• IBM scientists discovered how to move and position individual atoms on a metal surface using a scanning tunneling microscope. The technique was demonstrated in April 1990 at IBM's Almaden Research Center in San Jose, Calif., where scientists created the world's first structure: the letters "I-B-M" -- assembled one atom at a time. (VV1003) (From the IBM website)

More Recent Version (2006)

• Made with an atomic force microscope by laying down 5-base-long DNA segments onto a silicon substrate. The width of the lines ranges from 59 to 79 nanometers, and the average height of the deposited DNA is 2.4 nanometers (from the IBM website)

Published by AAAS

Y. Sugimoto et al., Science 322, 413 -417 (2008)

Fig. 3. Complex atomic patterning by vertical interchange atom manipulation at room temperature

What Makes “Small” so Special?

• At nanoscale individual molecules may behave in a way that departs

from the average • The surface to mass ratio becomes large, and small objects have a

tendency to stick together• Quantum rules, like the uncertainty principle, become important• For example. anticancer research is working with so-called

“nanoshells” of glass thinly coated with gold, whose “color” can be controlled at the nanoscale– Antibodies are attached so that the nanoshells connect

themselves to the cancerous cells and radiation of a wavelength that does not affect anything else in the body heats up the gold, which kills the surrounding cancer cells

• The energy levels of nanoscale particles known as “quantum dots” can be controlled for new types of lasers and light emitting diodes

Why All the Fuss?

• Radical vision of molecular manufacturing– Using molecular manufacturing, radical scientists see the

potential for self-replicating nanomachines, perhaps biomimetic, that are able to construct anything by placing atoms together in the required structure

– Maybe even eliminate disease by repairing nanoscale structures such as cells, targeting and eliminating malignant cells, and improved performance by replacing body parts with nanosynthesized substitutes.

– At one extreme, nanotech is seen as having the potential to free us from pollution, repair existing environmental damage, feed the hungry, enable the blind to see and deaf to hear, eradicate disease, and extend the length and improve the quality of life through repair of failing organs

Actual Results So Far

• Many scientists today believe that molecular assemblers of the type envisioned by the radical nanotechnologists are not physically possible

• Current applications are dominated by tools for scientists and new materials structured on the nanoscale and used for cosmetics, medicine, and some manufactured goods – such as breathable

waterproof fabrics and stain resistant clothes and carpets

Actual Products Today From Larry J Kricka, University of Pennsylvania Medical Center

Dangers of Nanotech

• Many scientists claim that the self-replication-run-amuk scenario is impossible, but others argue that we have not yet done sufficient research to discard the possibility

• We don’t really know what happens when novel types of matter (e.g., fullerenes and carbon nanotubes) enter the environment – something that is almost sure to happen sooner or later as these materials are put into application

• As with earlier revolutionary technologies, nanotech can disrupt existing institutions for production, as we end up with too many goods at too low a price to sustain employment at current wages

• In general, it’s what we do not and cannot know that causes much of the fear – no one predicted the internet when the first computers were made, and no one knows what nanotech will bring about

Nanotech IP

• To the extent that nanotech innovation consists simply of “miniaturizing” existing machines, patents may be unavailable (mere change of scale - obvious)

• To the extent that nanotech innovation relies on the truly unique properties that manifest at the nanoscale, however, patent obviousness should not be a bar to patents

• Moreover, many nanotech products can be kept secret or in any event are difficult to reverse engineer

The Future of Nanotech Innovation

• At present there is nothing equivalent to the 1's and 0's of computer software or the AGCT molecules that sequentially make up strands of DNA

• When nanotech matures, however, some believe that the production of just about anything (not just information) will be very inexpensive, once one has the “blueprint” for directing the nanotech device to build what is needed

Atom-by-Atom Construction

• Recall the earlier picture:

Atom-by-Atom Construction• Instead of a 2- or 4-letter alphabet we may have

a somewhat longer set of “letters” to choose from in putting atoms together to create a new nanotech product

• Most likely certain combinations of atoms will be found to be useful in achieving certain functions or subfunctions

• With time, this knowledge will get systematized, into something roughly analogous to computer software

• From there it is not hard to imagine higher level design “languages” for nanotech products as well

Cloning of Physical Artifacts

• The term “cloning” has taken on negative connotations in the biological context

• However, with nanotech, essentially any three-dimensional physical object may be exactly copied, using what will become standard techniques (Weil)

• Not only could everyone have his own “original” Mona Lisa, nanotech inventions could also be easily copied

Implications from the Software Debate

• Does the 30-40 year debate over the legal protection of computer software has any relevance for biotech and nanotech?

• Applying copyright directly to solve the misappropriation problem was probably a mistake

Copyright and Software

• Copyright does protect against “piracy” by prohibiting direct copying of source and object code

• However, it encouraged courts to protect functional aspects that were not vulnerable to “misappropriation”

• In 1994 I suggested (again) that an anti-misappropriation paradigm better suited new technologies vulnerable to cheap and easy copying: Dennis S. Karjala, Misappropriation as a Third Intellectual Property Paradigm, 94 Colum. L. Rev. 2594 (1994)

Copyright and Software

• Copyright also endures for much too long a term, especially for functional products

• For many programs that has not been a problem because their lifetimes are short

• However, as the Microsoft (Windows) example shows, copyright can convey a very long technological monopoly on some important programs – and copyright is not designed to protect technology!

Sui Generis Protection

• In retrospect, a sui generis statute that protected only literally or near-literal copying of code, for a much shorter term, would have been preferable. (Japan tried to adopt such an approach, but the US protested and the Japanese caved in.)

• Patent today continues to serve the biotech and nanotech industries reasonably well, notwithstanding the ongoing debate over several aspects, especially the patenting of human genes

Sui Generis Protection

• Will the biotech and nanotech industries reach the stage at which new functional products will be, like complex computer programs, designed by application of well understood principles in a straightforward manner – costing time, skill, energy, and money but not involving much, if any, patentable invention?

• If so, we must resist the application of copyright to solve the misappropriation (market failure or public goods) problem