Abstract
Although the push to get universities to accumulate IP by commercializing their scientific research was a conscious movement, dealing with the blowback in the form of contracts over the transfer of research tools and inputs, called materials transfer agreements (MTAs), was greeted by universities as an afterthought. Faculty often regarded them as an irritant, and TTOs were not much more welcoming. One reason universities could initially ignore the obvious connection between the pursuit of patents and the prior promulgation of MTAs was a legalistic distinction made between intellectual property and contract law, which of course is of direct concern to a lawyer, but should be less compelling for anyone trying to understand the big picture surrounding the commercialization of academic science. However, as a subset of scientists were increasingly drawn into the commercial sphere, they tended to attach MTAs to research inputs requested by other academics; and this began a tidal wave of MTAs which shows no sign of abating. Furthermore, many IP-related restrictions have been loaded into individual MTAs, including the stipulation that the existence and content of MTAs themselves be treated as secret and proprietary. The paper closes by looking at recent arguments that the growth of MTAs has not actually harmed the research process, and rejects them.
This is a preview of subscription content, log in via an institution to check access.
Similar content being viewed by others
Notes
This history has been cobbled together from a wide range of far-flung sources, primarily because there is no history of the MTA as such. Key texts are (Eisenberg 2001; OECD 2006; Rai 2004; Rodriguez 2005). This summary is also based upon a series of interviews I have conducted with a number of technology transfer officers at major universities in 2005–2006, and in particular with Joyce Brinton, Director of the Harvard Office of Technology Transfer 1984–2003. These interviews were generally not recorded, and many statements were explicitly identified as ‘off the record’.
For example, in interviews with the author, Gilbert Smith at Duke estimated that he only saw roughly 75% of outgoing MTAs at Duke; Catherine Ives at Boston University estimated their office saw less than half of outgoing MTAs; the MIT officer (in 2006) insisted they did not even monitor the MTAs signed by their faculty. This phenomenon has dire implications for the statistics reported below in Table 1, and any attempt to quantify the growth of MTAs in general.
For instance, it has been reported that the Stanford TTO (generally regarded as the pacesetter) only took over responsibility for negotiations for IP rights, including MTAs, in 1987 (Matkin 1990, pp. 131–132). When I asked Joyce Brinton when responsibility for MTAs was shifted to the TTO at Harvard, she said she could not remember.
This list and Table 1 is extracted from examples provided in live and email interviews with TTOs conducted in 2006. The prospective list of universities to be approached for interviews was selected to provide a cross-section of both public and private institutions listed by AUTM as conducting substantial commercial research. The sample was further winnowed down by the lack of willingness of many TTOs to discuss their policy in detail, or provide data on MTA-related activities.
For some fine examples, see the Columbia unit’s annual report (called ‘Science & Technology Ventures’) at www.stv.columbia.edu (last accessed 13 August 2007).
The group included Maria Freire (NIH), Joyce Brinton (Harvard), Sandy Shotwell (Oregon Health Sciences), Kathy Ku (Stanford), Fred Reinhardt (Wayne State) and Marjorie Forrester (Maryland).
See 60 Federal Register 12771 (1995); also at http://www.autm.net/aboutTT/aboutTT_fedReg.cfm (last visited 25 Aug 2007).
This was recognized early on by Eisenberg (2001, p. 226fn) and later confirmed, for example, on the Science Commons website http://sciencecommons.org/projects/licensing/background-briefing/ and by Baca (2006). Again, there is no actual data on this practice, and TTOs are loathe to provide breakdowns of UBMTA use.
In fact, the story was a small part of the larger loss of civil liberties in the US attendant to the War on Terror: see the docu-drama Strange Culture (2006).
See (Angrist and Cook-Deegan 2006). The endorsement of the neoliberal line on patents originating with (Kitch 1977) can be found in (Thursby and Thursby 2007b); Wesley Cohen’s sentiments were expressed at the Harvard Berkman Center Conference on “Patent Law and innovation in the Life Sciences” in December 2005, while I was in attendance. Both Walsh and Owen-Smith have expressed similar sentiments at meetings of the Society for Social Studies of Science. Cook-Deegan’s echoing of this chorus can be found in (Caulfield et al. 2006).
Laboratory Corporation of America Holdings v. Metabolite Laboratories Inc. et al. No. 04-607, 2006 WL 1699360 (U.S. 22 June 2006).
This point has been made repeatedly, directed at the principal authors of the surveys that assert little harm to the research process, at various conferences I am aware of; but I have yet to see it in print. Jerome Reichman made the point at the Dec. 2005 Harvard conference cited in fn.13 above; Rebecca Eisenberg made it at the May 2006 OECD Conference on the Research Use of Patented Inventions (OECD 2006, p. 20).
A starting point would be to consider the composition of those chosen to be members of the National Academy or officers of the AAAS. The level of commercial participation amongst these groups is bound to be much higher than the mean level of participation of the whole community of scientific researchers, given the effects of decades of commercialization on current career tracks.
References
Angrist, Misha, and Robert Cook-Deegan. 2006. Who owns the genome? New Atlantis, Winter: 87–96.
Baca, Megan. 2006. Barriers to innovation: Intellectual property transaction costs in scientific collaboration. Duke Law & Technology Review, No. 4.
Baldini, Nicola. 2006. University patenting and licensing activity: A review of the literature. Research Evaluation 15 (3): 197–207.
Biagioli, Mario. 2006. Galileo’s instruments of credit: Telescopes, images, secrecy. Chicago: University of Chicago Press.
Blumenstyk, Goldie. 2007. Scientists can usually acquire research tools and data, despite patents and other protections, survey finds. Chronicle of Higher Education, January 17.
Campbell, Eric, Brian Clarridge, Manjusha Gokhale, Lauren Birenbaum, Stephen Hilgartner, Neil Holtzman, and David Blumenthal. 2002. Data withholding in academic genetics: Evidence from a national survey. Journal of the American Medical Association 287 (4): 473–480.
Caulfield, Timothy, Robert Cook-Deegan, F. Kieff, and John Walsh. 2006. Evidence and anecdotes: An analysis of human gene patenting controversies. Nature Biotechnology 24 (9): 1091–1094.
Cohen, Jon. 1995. Share and share alike isn’t always the rule in science. Science 268: 1715–1718.
Cohen, Wesley. 2005. Patents and appropriation: Concerns and evidence. Journal of Technology Transfer 30: 57–71.
Cohen, Wesley, and Stephen Merrill (eds.). 2003. Patents in the knowledge-based economy. Washington: National Academies Press.
Cohen, Wesley, and John Walsh. 2007. Real impediments to academic biomedical research. Innovation Policy and the Economy, 7.
Collins, Harry. 1992. Changing order. Chicago: University of Chicago Press.
Cook-Deegan, Robert. 2007. The science commons in health research. Journal of Technology Transfer 32: 133–156.
Cuiker, Kenneth. 2006. Navigating the futures of biotech intellectual property. Nature Biotechnology 24: 249–251.
Cyranoski, David. 2002. Share and share alike? Nature 420: 602–604.
Eisenberg, Rebecca. 2001. Bargaining over the transfer of research tools. In Expanding the boundaries of intellectual property, ed. R. Dreyfuss. Oxford: Oxford University Press.
Green, Peter. 2004. Material transfer agreements. Microbiologist June: 36.
Hansen, Stephen, Amanda Brewster, and Jane Asher. 2005. Intellectual property in the AAAS community. http://www.juergen-ernst.de/download_swpat/studie_sippi.pdf.
Hansen, Stephen, Amanda Brewster, Jana Ascher, and Michael Kisielewski. 2006. The effects of patenting in the AAAS scientific community. http://sippi.aaas.org.
Heller, Michael, and Rebecca Eisenberg. 1998. Can patents deter innovation? Science 280: 698–701.
Henry, Michelle, Mildred Cho, Meredith Weaver, and Jon Merz. 2003. A pilot survey of the licensing of DNA inventions. Journal of Law, Medicine and Ethics 31: 442
Jaffe, Adam, and Josh Lerner. 2004. Innovation and its discontents. Princeton: Princeton University Press.
Kitch, Edmund. 1977. The nature and function of the patent system. Journal of Law and Economics 20 (2): 265–290.
Krimsky, Sheldon. 2003. Science in the private interest. Lanham: Rowman & Littlefield.
Ku, Katherine, and James Henderson. 2007. The MTA-rip it up and start again? Nature Biotechnology 25 (7): 721–723.
Marshall, Elliot. 1997. Materials transfer: Need a reagent? Just sign here. Science 278: 212–213.
Matkin, Gary. 1990. Technology transfer and the university. New York: Macmillan.
Mirowski, Philip. 2004. Effortless economy of science? Durham: Duke University Press.
Mirowski, Philip, and Robert van Horn. 2005. The contract research organization and the commercialization of science. Social Studies of Science 35: 503–548.
Mirowski, Philip, and Dieter Plehwe (eds.). 2008. The road from Mont Pèlerin. Cambridge: Harvard University Press.
Mowery, David, and Arvids Ziedonis. 2007. Academic patents and materials transfer agreements: substitutes or complements? Journal of Technology Transfer 32 (3): 157–172.
Nagoaka, Sadao. 2006. Presentation to the CSIC/OECD Conference (2006).
Nedeva, Maria, and Rebecca Boden. 2006. Changing science: The advent of neo-liberalism. Prometheus 24 (3): 269–281.
OECD. 2006. Summary report on conference on research use of patented inventions. Madrid: OECD. At www.oecd.org/sti/ipr.
Owen-Smith, Jason. 2006. Commercial imbroglios: Proprietary science and the contemporary university. In The new political sociology of science, ed. Scott Frickel, and Kelly Moore, 63–90. Madison: University of Wisconsin Press.
Park, Paula. 2004. Buffalo cade highlights MTAs. The Scientist Aug. 9.
Pisano, Gary. 2006. Science business. Cambridge: Harvard Business School Press.
Posner, Richard. 2002. The law and economics of intellectual property. Daedalus Spring: 5–12.
Pressman, Lori, Richard Burgess, Robert Cook-Deegan, Stephen McCormack, Io Nami-Wolk, Melissa Soucy, and LeRoy Walters. 2006. The licensing of DNA patents by US academic institutions: An empirical survey. Nature Biotechnology 24: 31–39.
Rai, Arti. 2004. The increasingly proprietary nature of publicly funded research. In Buying in or selling out?, ed. Donald Stein, New Brunswick: Rutgers University Press.
Rodriguez, Victor. 2005. Material transfer agreements: Open science vs. proprietary claims. Nature Biotechnology 23 (4): 489–491.
Rounsley, Steven. 2003. Sharing the wealth: The mechanics of data release from industry. Plant Physiology 133: 438–440.
Slaughter, Sheila, and Gary Rhoades. 2004. Academic capitalism and the new economy. Baltimore: Johns Hopkins Press.
Stein, Donald. 2004. Introduction. In Buying in or selling out? New Brunswick: Rutgers University Press.
Streitz, Wendy, and Alan Bennett. 2003. Material transfer agreements: A university perspective. Plant Physiology 133 (9): 10–13.
Thursby, Jerry, and Marie Thursby. 2003. University licensing and the Bayh-Dole Act. Science 301: 1052.
Thursby, Marie, and Jerry Thursby. 2006. Where is the New Science in Corporate R&D? Science 314: 1457–1458.
Thursby, Marie, and Jerry Thursby. 2007a. Are there real effects of licensing on academic research? Journal of Economic Behavior and Organization 63: 577–598.
Thursby, Marie, and Jerry Thursby. 2007b. Knowledge creation and the diffusion of public science with intellectual property rights. In Intellectual property rights and technical change. Amsterdam: Elsevier.
Vogeli, Christine, Recal Yucel, Eran Bendavid, Lisa Jones, Melissa Anderson, Karen Louis, and Eric Campbell. 2006. Data withholding and the next Generation of Scientists: results of a national survey. Academic Medicine 81 (2): 128–136.
Walsh, John, A. Arora, and Wesley Cohen. 2003a. Effects of research tool patents and licensing on biomedical innovation. In Patents in the knowledge economy, ed. W. Cohen, and S. Merrill, 285–340. Washington: National Academies Press.
Walsh, John, A. Arora, and Wesley Cohen. 2003b. Working through the patent problem. Science 309: 2002–2003.
Walsh, John, Charlene Cho, and Wesley Cohen. 2005a. View from the bench: Patents and material transfers. Science 309: 2002–2003.
Walsh, John, Charlene Cho, and Wesley Cohen. 2005b. Supporting online materials for (Walsh, Cho & Cohen, 2005a). www.scencemag.org/cgi/content/full/309/5743/2002/DC1.
Walsh, John, Charlene Cho, and Wesley Cohen. 2005c. Patents, material transfers and access to research inputs in biomedical research. Final Report to the National Academy of Sciences, Committee on Intellectual Property Rights in Genomic and Protein-Related Inventions, 20 Sept. 2005.
Walsh, John, Charlene Cho, and Wesley Cohen. 2007. Where excludability matters: Material v. intellectual property in academic biomedical research. Georgia Tech working paper #20.
Washburn, Jennifer. 2005. University, Inc.. New York: Basic.
Author information
Authors and Affiliations
Corresponding author
Additional information
Apologies to the Steve Miller Band. This research was supported with a grant from the Seng Foundation. I would like to thank the officers of the technology transfer units of universities mentioned herein for their patience and kindness, especially in explaining to me why they could not provide the data that I was seeking.
Rights and permissions
About this article
Cite this article
Mirowski, P. Livin’ with the MTA. Minerva 46, 317–342 (2008). https://doi.org/10.1007/s11024-008-9102-2
Received:
Accepted:
Published:
Issue Date:
DOI: https://doi.org/10.1007/s11024-008-9102-2