PATENTING LIFE:

HOW THE ONCOMOUSE PATENT CHANGED THE LIVES OF MICE & MEN *

Fiona Murray

MIT Sloan School of Management

50 Memorial Drive E52-567

Cambridge, MA 02142

September 2007

*My thanks to Scott Stern, Mario Biagioli and Jason Owen-Smith for their advice on

this paper. Kenneth Huang and Kranthi Vistakula provided excellent research

assistance. All errors are my own. This research was funded in part by a Sloan

Foundation Fellowship and an MIT Provost’s Award.

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PATENTING LIFE:

HOW THE ONCOMOUSE PATENT CHANGED THE LIVES OF MICE & MEN

In October 1984 scientists at Harvard University published an article in Cell describing

their success in “engineering” the oncomouse, a transgenic mouse designed to have a

predisposition to cancer. Over the next two decades many oncomice were constructed,

changing the material culture of the mouse genetics community - the tight-knit group of

researchers who used standard mouse models to study illness. In April 1988, the U.S

patent office granted Harvard University a patent with extensive property rights over the

oncomouse. The patent touched off a whirlwind of controversy.

In the courtroom and in the popular press the oncomouse controversy centered on

“patenting life”; whether patents should be granted on an animal, particularly a mammal

(Kevles 2002). For members of the scientific community, the controversy was less

philosophical and more practical. Mention the oncomouse patent to a mouse geneticist

and he did not discuss the dilemmas of patenting mouse life; he talked about the

dilemmas of the oncomouse patent for his life in the laboratory because the patent and

Harvard's license of the patent to DuPont threatened to change laboratory life for the

entire mouse community. In 1984 when the oncomouse first entered laboratories it

forced scientists to change their material culture and cycles of credit. But in 1988 when

the oncomouse arrived bearing a patent, its potential to change the social fabric of the

lab and the community was more powerful, and more controversial. DuPont was

attempting to use its license in ways that were consistent with a commercial economy but

their practices were forcing scientists to change their scientific economy: transforming

their cycles of credit, reshaping their collaborative practices and changing the operating

rules of their economy. For almost a decade, gatherings of mouse geneticists were

animated by discussions of how to challenge DuPont’s restrictive practices. Eventually

the academics were able to prevent the encroachment of a commercial economy into

their community. However this did not mean their wholesale rejection of patents.

Instead, they came to incorporate patents into their academic cycles of credit, impart

them with symbolic meaning, and use them to define and protect the boundaries of their

economy from purely commercial cycles of credit. This suggests that we should not

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consider patents to be a signal that an academic community has lost its fight against the

commercial world, nor that its academic cycles of credit have been entirely captured by

more commercial cycles. Rather we must consider the complex and subtle ways in which

academics have transformed both the practical and symbolic nature of patents and

incorporated them as powerful elements in their local scientific economy.

I frame my enquiry of the oncomouse case in the context of the larger debate over the

boundary between academic science and the commercial world (Gieryn 1995; Shapin

2007). My approach is to grant patents equal status with publications and treat them

symmetrically in my analysis, thus moving beyond functional assumptions that patents

lead directly to commercial practices. I describe how academic laboratories choose (with

growing frequency) to inscribe their experimental knowledge not only in publications

(Latour and Woolgar 1979) but also in patents. I refer to these instances as the

production of patent-paper pairs (Murray 2002) because the two documents contain

similar knowledge claims (even though the literary forms are distinctive). Patents and

publications I argue become the starting point for two distinctive cycles of credit – a

commercial cycle based on patents, licensing and the accumulation of financial and

material resources and an academic cycle built on publications, the accumulation of

reputation, grants, materials and other experimental resources. These two cycles are

embedded within two distinctive economies (Biagioli 2007) each providing the “operating

rules” shaping access, credit and control. Having established the notion that these two

separate economies exist I explore how they intersect as a window into the question of

how patents have changed scientific life. This formulation allows me to move beyond a

simple portrayal of patents and the commercial economy as either totally irrelevant to

(e.g. Latour and Woolgar 1979) or destroying (e.g. Kohler 1999, Krimsky 2003) the

academic economy. Against this backdrop, I examine whether and how the dramatic

expansion of patent rights and the rise in patent-paper pairs as the mode of inscription in

many academic labs changes the delicate dynamics associated with the academic cycle of

credit. I use the oncomouse to trace out the intersections between the academic and

commercial cycles of credit and show how patents are now intimately entwined in the

academic economy on terms negotiated not by lawyers but by scientists themselves.

The Case of the oncomouse – a note, a brief history and a patent-paper pair

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The development of the oncomouse, its publication, patenting and the response of

academic scientists is a strategic research site in which to study the role of patenting in

the academic and commercial economy. The four year gap between publication and the

grant and licensing of the patent provides a “natural experiment”; we can examine how

the oncomouse shaped the material culture, cycles of credit and local economy of the

mouse community when it arrived in the lab without a patent on its life. We can then

explore how the patent changed the life of the mouse and the life of the mouse men (as

they were known in the 1930s); and whether and how the patent reshaped cycles of

credit and the economy. The strategy of focusing on a key event and its aftermath is not

new in the sociology of science. After all, consensus over practice is hard to reveal

(Rader 2004, Scott, Richards and Martin 1990). It is often only in moments of

transformation when assumptions are challenged that scientists reveal their thinking

about taken-for-granted aspects of their milieu.

The milieu for mouse geneticists before the arrival of the oncomouse is well documented

(Rader 2004). The Mouse Club or mouse men as they were sometime known was a tight-

knit community held together by intertwined social relations and organizations. Their

material culture was based on the informal exchange of mouse strains and the more

formal role of the Jackson Laboratory (JAX) as a mouse repository, breeding center and

master of nomenclature. The culture remained remarkably stable until 1970s. The

advent of the tools of molecular biology transformed many communities – mouse genetics

among them – changing their material culture, the practice of science, the do-ability of

questions and the importance of certain inquiries (Judson 1996, Morange, 1998; Fujimura

1987). Ken Paigen, a Director of JAX, described these changes:

At the end of 1980, in a period of a few months, an entirely new era in mouse genetics began, with the creation of the first transgenic mice, initiated by the abrupt and then continuing entry of molecular biological techniques into what had, until then, been a classical genetic system. What ensued was an explosion of knowledge when a myriad of new biological and molecular insights appeared over the following years. Although certainly built on the past, the new science quickly developed a life of its own and deserves its own chapter (Paigen 2003).

In the winter of 1980, in an example of multiple discovery (Merton 1973), five teams

published experiments describing the production of transgenic mice. When foreign DNA

(a so-called transgene) was injected into mouse eggs, the genes were incorporated into

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the offspring creating a “transgenic” mouse1. These transgenic methods filled a gap in

biological techniques that the mouse community recognized and agreed upon - the

insertion of a gene into a mammal allowed researchers to monitor the gene’s function in

the whole organism instead of in a single cell.

Like the researchers in the 1920s who had recognized and worked to establish the

potential of animal “models” such as Drosophila or mice (Kohler 1994, Rader 2004),

scientists studying cancer were among the first to recognize the potential of transgenic

mice. Creative experimentalists had used in-bred mice that exhibited random and non-

specific cancer-forming mutations to reveal insights into cancer biology, but the entire

program suffered from a lack of precision. During the 1970s, cancer biologists had

shifted their focus to the cellular level where they identified an intriguing class of cancer-

related genes – so-called oncogenes. However “their action in a living organism is, at

best, incomplete” (Stewart et al. 1984, p. 627). It occurred to biologists that oncogenes

could be introduced into mice via transgenic methods to produce a valuable “oncomouse”

– a mouse for the study of cancer. In the early 1980s only a few groups actually

attempted these experiments. The techniques were complex, and few labs had

accumulated adequate resources. Philip Leder at Harvard. headed one such lab.

In 1982, Timothy Stewart, a co-author on one of the first transgenic mouse publications

(Wagner et al. 1981) with considerable experimental expertise, applied for a position in

Leder’s lab. With Stewart's skills, even though the Leder lab had not pioneered the

original transgenic methods, the group was able to create a viable transgenic mouse that

carried an oncogene and thus a predisposition for cancer. Using the mouse to examine

the importance of genes in the onset of cancer, Leder came to recognize that “it could

serve a variety of different purposes, some purely scientific others highly practical”

(Kevles 2002, p. 83). Recognizing the duality of his new experimental knowledge led

Leder to develop two quite different inscriptions claiming the novelty and interest of his

mouse – a patent-paper pair. In 1984 Leder, and a competing team, published

oncomouse results in the prestigious journal Cell, the teams incorporating different

oncogenes (Brinster et al. 1984; Stewart et al., 1984). Two months before submitting the 1 The groups included Ruddle at Yale (Ruddle et al. 1980), a collaborative effort between Brinster and

Palmiter at the University of Pennsylvania and the University of Washington (Brinster et al. 1981),

Constantini (Constantini and Lacy 1981) at Oxford (later Columbia), Mintz at Fox Chase Cancer Center

(Wagner et al. 1981), and T.E. Wagner’s group (Wagner et al. 1981).

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manuscript Leder created another inscription and on June 22, 1984 Harvard filed a

patent application on the oncomouse. This decision can be traced to late 1983, when

Leder approached the Harvard Office of Technology Licensing at the Medical School to

discuss the patentability of his research (Kevles 2002). DuPont was also involved in

these discussions as Leder described:

The work that we did was supported, actually, by an industrial concern, DuPont. They made a significant investment in that research and this is one of the products that could emerge from it, and did emerge from it, and they are incentivised to make further investments in this process by virtue of the return that they will receive [from the patent]. That is our system. You may like it--you may not like it. (Lasker Foundation 1987)

The other oncomouse team - led by Palmiter and Brinster (funded by NIH, NSF and a

graduate fellowship from SmithKline Beecham) - did not file patents, although they were

free to do so2.

The patent and the paper are very different in the breadth of their claims. The

publication abstract describes a modest set of experiments: “We have produced 13

strains of transgenic mice that carry an otherwise normal mouse myc gene in which

increasingly large portions of the myc promoter have been replaced by a hormonally

inducible mouse mammary tumor virus promoter”. The legal claims of the patent are

sweeping in their scope with the first establishing property rights over “A transgenic non-

human mammal all of whose germ cells and somatic cells contain a recombinant

activated oncogene sequence introduced into said mammal, or an ancestor of said

mammal, at an embryonic stage.”

After the Patent-Paper Pair - establishing & defending separate economies

With the patent in the hands of the examiners, the application known to only a few

people, and its future implications unimaginable by all, the mouse community started to

reshape their material culture and their academic cycles of credit and to construct a new

economy around the opportunities created by the (as yet unpatented) oncomouse.

Researchers recognized that “the creation of transgenic mice carrying specific cancer-

promoting genes opened an exciting new era in oncology” (Cory and Adams 1988). Over

2 In this period (1982-1984) academic patenting was still relatively unusual: the top five universities in terms

of biotech patent applications (ultimately granted) (as defined by US codes 800/001; 435/172.3; 435/240.1;

435/240.2; 435/240; 435/317.1; 935/032; 935/059; 935/070; 935/076; 935/111) were the University of

California (14 patents), Columbia (8), MIT (6), University of Texas (6), Harvard (5) and Stanford (5).

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sixty peer-reviewed articles using oncomice were published in the next five years. Their

authors could publish only because they transformed their existing assets into access to

new transgenic expertise. Scientists who wanted to assemble the requisite materials and

methods to incorporate oncomice into their lab’s knowledge production had to initiate a

series of intricate exchanges. They did so with the originating labs forming an "invisible

college" and reconstituting their community (Crane 1969). The core labs maintained their

"competitive edge" despite the fact that their publications laid out their methods clearly

and they held (as yet) no oncomice patent rights. Their advantage came from the

difficulty of transgenic techniques and the shortage of individuals with requisite skills;

embryo manipulation and maintaining and breeding the new fragile mice. These were

not skills typically available to cancer biologists, who either worked on a molecular level

or who had relied upon JAX for in-bred mice.

Control of key transgenic expertise also brought significant credit to young scientists

early on in their careers. One lab with expertise “got an uptick in applications from

people wanting to do post-docs and learn methods that could take them elsewhere and

gain fame and fortune.” Some of these students had enough experience to set-up

independent labs (taking mice with them) and build their own cycle of research,

publication, reputation, and exchanges for other materials around oncomice. Stewart,

Leder’s post-doc, had received a prestigious first authored publication in return for his

expertise. Rather than transforming this into academic assets took a position at the

recently public biotech sensation Genentech.

The establishment of a stable set of practices for sharing mice and transgenic expertise

was particularly problematic because of the instability of the materials themselves.

Unlike the flies that Kohler describes as “cosmopolitan hitchhikers” or the traditional JAX

mice which had been stabilized by new breeding and shipping methods, transgenic mice

posed material challenges with direct implications for the scientific economy:

”I had a few requests for mice and offers of co-authorship. But I did not send them the mice. I send a long and detailed explanation of the implausibility of the request. The mouse line died very young. Over the period I was having to slow my own work down because they were breeding very poorly and so it was impossible to ship them around.”

As a result, even though the mouse community was already embedded in an economy

with strong expectations for free access to mice and in which mice were unproblematic

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low value materials in the cycle of credit, labs with transgenic skills could carefully

control the mice (with little threat of social pressure) and establish credit for their

oncomice experiments. By necessity and drawing from the competitive world of genetics

in which the scarcity of genes shaped competition (Atkinson et al. 1998), they used

collaboration as a mechanism to retain control. Transgenic experts incorporated the high

profile and valuable tools of molecular biology into their cycles of credit by choosing co-

authors who expanded their range of skills. One such collaboration was struck between

David Baltimore at MIT and Frank Constantini (an early transgenic pioneer) at Columbia.

Already a well-known scientist in genetics, Baltimore sent Constantini a gene and he in

return created transgenic mice that allowed Baltimore to examine the gene in an

organism – a program that was rapidly becoming one of the most powerful in the cancer

field. Their publications were co-authored (Weaver et al., 1986). Although competition

became more intense in the Mouse Club the community still held high expectations for

collaborative behavior among its members. The scientific press became a venue to

“punish” those who failed to meet these standards. When one member -MIT Nobel Prize

winner Tonegawa -was unwilling to share his mice for any form of credit, an informal

“poll” was documented in Science: From a list of 15 researchers to whom he claimed to

have given mice, journalists reported that three received them a year later from a post-

doc, one was denied as a direct competitor, four received mice with the stipulation of

direct collaboration and six said they had never approached Tonegawa because of his

reputation, going directly to his post-doc instead (Cohen 1995).

By the late 1980s oncomice started to “stabilize” and a new transgenic economy

developed reflecting the significant value in the credit cycle afforded by transgenic mice.

They combined materiality and problem-orientation being less fecund than flies and in

their precision, more like genes, defining a narrow but powerful set of opportunities.

One scientist described his view of the operating rules of the economy: “in general I don’t

think you need credit as a co-author unless you contribute materially to the new

experiment but there are people who expect they’ll be a co-author even if they just send

you something through the mail…I don’t care. If someone says only if they can be a co-

author and I really want to do the experiment I say fine. Of course for pre-publication

requests we do require co-authorship because we are still characterizing the mouse or

the particular construct”. Nonetheless some felt that the transgenic economy remained in

flux and was still based on widely varied expectations and practices. Some called for

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“internationally acceptable and consistent guidelines” to remedy the difficulty scientists

were having stabilizing their practices for access, credit and collaboration. Most

scientists recognized that one of pre-requisites for the progress of the field was follow the

tradition of other old and established organism communities and to cede control of the

mice to an efficient breeding and distribution facility, such as JAX. In the words of one

scientist, “we needed an ambitious and well-supervised operation”. At precisely this

moment, DuPont appeared with the oncomouse patent and laboratory life changed

dramatically for the entire mouse genetics community.

Harvard initiated the commercial cycle of credit in 1988 when the oncomouse patent was

granted and licensed to DuPont giving the firm an exclusive license to the sweeping

coverage of the transgenic landscape embodied in the patent. The license gave the firm

the control it needed to start the transformation of property rights into financial

revenues. Traditionally, industrial owners or licensors of scientific materials, techniques

or instruments sought to develop this cycle by extracting financial rewards from other

for-profit firms (Gans and Stern 2000). The licensor establishes all the rules of the

commercial economy through their contractual or informal arrangements. However,

there is no legal reason why they should not also ask academic scientists for financial

rewards and incorporate them into the commercial cycle. In initiating the oncomouse

economy, DuPont did just this when it set out to establish a commercial economy for both

industry and academic scientists. Up to this point there was a widespread assumption

among academics that they were not required to participate in the commercial economy

when they wanted to use patented inventions – a tool, technique or material (such as a

mouse). This was based on the so-called “experimental use exemption” – a judicially

created exemption intended to protect those who used a patented invention merely “out

of curiosity”, or for “amusement.” The scope of this exemption has recently been

challenged in Mahey v. Duke University which states that universities do not engage in

research for curiosity but rather as part of a commercial mission – to raise research funds

(a notion that fails to appreciate the distinction of the role of resources between the

academic and the commercial credit cycles).

In the economy that DuPont envisioned, academics would no longer be able to establish

an independent academic economy for oncomouse with control of the mice translated

into credit in the form of prestige or co-authorship. Instead the prevailing currency

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would be financial. The actual cost of the mice was high – the $50 price tag was ten

times the price of a JAX mouse (Anderson, 1988). DuPont also wanted scientists (or their

institutions) to sign a legal license when they used any oncomouse - bought, bred or

borrowed - including three terms:

DuPont forbade scientists from following their traditional practices of sharing

or breeding oncomice thus precluding the incorporation of oncomice into an

academic economy where mice were exchanged for other materials, credit etc.

This was true for scientists who bought an oncomouse from DuPont but for

scientists who generated oncomice on their own.

DuPont imposed contractual control on scientists, specifically that annually

disclosure their research plans and results to the company. This was not a

strict prohibition on publishing but rather a requirement that scientists using

an oncomouse would provide an annual research report. While not disruptive

of the academic cycle of credit, this control did shape another core aspect of

the academic economy, namely individual control of the academic agenda, the

timing of publication etc.

DuPont required that scientists give them control over future inventions made

using oncomice. These are called reach-through rights (common in contracts

between biotech and pharmaceutical firms) and give the patent holder (or its

licensee) a share in any proceeds from a future product developed using the

patented technology. This was the first time a company had imposed such a

provision on academic life scientists.

DuPont also imposed even more stringent conditions on commercial scientists who

wanted to use oncomice. The terms of the reach-through rights were stricter and DuPont

also charged a high price for the license. But few industrial scientists had the interest or

the expertise to use oncomice. In the late 1980s the expertise to accumulate resources

using oncomice only existed in the academic community.

The mouse community fought to ensure that their traditional academic cycle of credit

was not trumped by a commercial cycle. They did not object to DuPont imposing a

commercial cycle on other commercial scientists (even though they thought it naïve as a

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way of expanding the acceptance of transgenic mice in the study of cancer and thus

expanding demand). Rather they opposed the notion that the contractual operating rules

and values of the commercial economy would dominate how scientific resources were

accumulated and how scientists collaborated with one another.

The existing activities and institutions that had developed to support the biology

community and later the mouse genetics community, in particular the annual Mouse

Molecular Genetics summer conference at Cold Spring Harbor, became a central

organizing point for their resistance. According to observers, “the grumbling reached

insurrection proportions after a meeting at Cold Spring Harbor” in August 1992

(Anderson, 1993). In an impromptu session led by Harold Varmus (a prominent member

of the community and Nobel Prize winner) over three hundred researchers shared their

grievances. They raised objections to each of the controls that DuPont sought to exercise

over the oncomouse. In the words of one scientist: “It was an enormous obstacle to free

and open distribution of information and materials….it was a whole new way of doing

science…it really affected the way the mouse research community works” (Rajewsky

quoted in Jaffe 2004). The notion of commercial reach-through rights was particularly

disturbing. On the one hand this is perplexing; scientists have long negotiated something

akin to control rights when they negotiate the complex expectations of authorship versus

citation when translating and accumulating their resources (Biagioli and Galison 2003).

However, these claims are quite nuanced and weakened over time as ideas and methods

became more widespread. On the other hand, the imposition of rights to an on-going

“research” stream on the basis of intellectual property rather than continued

collaboration was an alien concept antithetical to both local and more universal scientific

practice. As one scientist put it:

“In science we always try and appreciate a new idea and give credit. People with something new hold onto it for a while and we collaborate with them but over time these rights weaken and ideas become mainstream. No-one monopolizes them forever. If they do, they just won’t reach the sort of widespread acceptance that is so vital to our field”

Whatever their opinion of DuPont, scientists were in a bind. Most could not simply drop

oncomice from their research agenda. As the success of the research line over the prior

five years had shown, oncomice were a valuable tool that for scientists accumulating new

insights into the role of cancer in whole mammals. Instead they chose to operate in the

shadow of the commercial credit cycle – maintaining their academic cycle within the now

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“underground’ academic economy (de Mequista and Stephenson 2006). Some were

determined to flout the law “and simply breed their own oncomice, effectively boycotting

the company” (Anderson 1993). Paigan, feeling very frustrated with the patenting

situation, announced that JAX would ignore patent law and distribute the mice without a

DuPont license (much to the dismay of his legal counsel!). This form of widespread

infringement is consistent with recent survey results documenting that scientists rarely

consider patents in designing experiments (Walsh et al. 2003). However this was mindful

insurrection not benign neglect of the details of patent law. Others attempted to

circumvent the patent and “invent around”. While some faculty vocally resisted and

proceeded without any adherence to DuPont’s requirements others lived with a cloud of

fear (Smaglik 2000).

A few scientists tried to use the legal system, hoping to bring a law suit against DuPont to

invalidate or narrow the scope of the patent and thus do away with the entire commercial

economy:

“I have been contacted over the years by two or three lawyers on behalf of other academic labs who wanted me to join them to challenge the patent so that they could avoid the licenses and void the patent. I didn’t join them- it just seemed like an exercise that would be costly and time consuming. I preferred to get on with what I was doing, breed my mice and ignore the patent.”

These actions never gained momentum. Instead, scientists turned to their most powerful

and prestigious institution to pressure the firm. In 1995 Varmus, who by then was

Director of the NIH, initiated discussions with DuPont. Through a series of protracted

negotiations, he held onto the principle that DuPont should not infringe upon academic

science and that the boundaries of patent law should not restrict or change the academic

economy. In other words he argued for two economies and two cycles of credit. In late

1999 DuPont and the NIH signed a Memorandum of Understanding (MOU) under which

(NIH funded) academic scientists could use oncomice without cost for non-commercial

purpose, including research sponsored by a commercial firm. Press coverage at the time

announced that researchers could now freely exchange the mice (Smaglik 2000). In fact,

the MOU explicitly stated that a Material Transfer Agreement was required for exchange

with colleagues at another non-profit institution even though the arduous terms of the

license had been eliminated. With this decision the two economies had effectively been

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separated once again and there was a return to the status quo. The boundary between

science and the commercial world had been defended.

After the NIH-DuPont Agreement – how patents enter the academic economy

If the story ended here it would be a conventional account of the endurance of

“academia”, even in the face of strong patents and an aggressive licensor. However, it

would be a “thin” account of the community to argue that they rejected patents

wholesale. The reality was more complex. The patent paved the way (through legal

precedent) for future patenting opportunities on other mice (Kevles 2002) and many of

the same scientists who were furious at DuPont for patenting and imposing a commercial

economy on academics took advantage of this precedent and started patenting their own

mice. One mouse geneticist remembers:

“I was chairing yet another session on the problems of patenting in mouse models [the meeting took place at Cold Spring harbor in the late 1990s]… Everyone was complaining about the patent restrictions, what the licensing requirements were, how arduous they were and how they stopped them from acting independently… Then I asked 'Would all those in the room with a patent please stand up' suddenly half the room stood up.”

So why did they patent? Why didn’t their patenting contradicted their outrage? How do

we account for the fact that scientists in the mouse community, like so many of their

peers in other parts of academia, on the one hand opposed patents but on the other

started to turn their powerful literary inscription engines to produce patents as well as

publications? They did not want to establish a commercial economy within academia.

Instead, interviews reveal that scientists redefined the meaning of their patents.

Whereas DuPont had exercised its patent rights in a commercial cycle to derive credit in

the form of monetary reward, the mouse community stripped away many of the direct

economic implications from the idea of patents. They developed a complex new

repertoire of practices using patents to shape credit and control and establish new terms

in the academic economy.

While it remains something of a taboo to acknowledge the role of commercial

instruments such as patents in the academic economy, interviews suggest that patents

influenced mouse geneticists’ (and other academic scientists’) notions of control and

credit. First, patents emerged among mouse geneticists as a new channel through which

to transform experimental knowledge claims into a traditional form of prestige and

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initiate the process of academic accumulation. Gaining a patent established the priority

and the importance of a particular idea in a different sphere and with a different judge

but could still bring prestige. As one scientist noted about patents in her own calculus of

credit, “a patent is different from consulting. You see it’s really more like a publication. It

has to meet certain hurdles and there is a high bar I think (I’ve never tried it but I would

like to). You know, you have to be inventive and useful and someone really has to think

that it’s new.” While gaining patents might be a source of pride, producing useful

products was for many scientists the currency that really brought “enormous personal

satisfaction” and prestige not just from peers, "but also from friends and family, and from

the outside world.” Many mouse geneticists thus came to see patents as a “necessary

evil” but an “important step” in the fulfilling a sense of obligation they held: that their

“research has a long term impact on health, on diseases like cancer, and on finding a

cure.” In other words, it allowed for an even greater repertoire of credit in the already

rich cycle of credit of academia. At the same time, academic scientists in mouse genetics

and beyond checked the degree to which patents could replace publication as the form of

credit for establishing a reputation within academia. At least among the top-ranked

research universities, the tenure decision among mouse geneticists (and other biologists)

still relied on publications and impact not on patents.

Patents also gave scientists an additional tool through which to exercise control over

their assets. By increasing the control that an inventor had over key scientific resources,

patenting had the potential to reshape social relationships between academics, re-

centering them on scientists with patents. The features that defined patents - strong

control rights and the legal rights to exclude - shifted the balance of competition versus

cooperation towards a stronger and “legally” sanctioned form of competition. Arising in

the shadow of the patent (rather than in court), this shifting dynamic was most clearly

seen through its impact on academic collaboration. It was exemplified by the story of one

mouse scientist criticized by colleagues in Science for his track record in mouse

exchange. He lamented that “everybody and their brother would like to get my mice, and

if they don’t get it in three months, they badmouth me” (Cohen 1995) but went on to

argue that an Amgen lawyer had to approve every exchange so he was in a difficult

position when it came to compliance. He could, however, collaborate because this

circumvented the legal issues. Thus collaboration provided scientists with a (gracious?)

way out of the dilemma of whether and when to cede control of an asset and under what

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terms. For some this was a competitive benefit, for others an unfortunate outcome of

clumsy licensing, but it was difficult for the mouse community to make this judgment and

to sanction those who used patents for personal gain. One geneticist complained:

”They [the mice] should be part of our communal resources. Patents on mice cause problems for the community and just make bad people worse and they seem to make the rich get richer if you know what I mean – not so much financially – I mean how much could Phil have made on the mice but they do give him power”

Again practices to check the ability of scientists to use patents strategically within the

academic mouse economy have emerged. An academic exemption (based on contracts

rather than judicial fiat) has become a key aspect of negotiations around the licensing of

transgenic mice and is expanding to other arenas of academic patent licensing. While

controversial, this seeks to carve out a protected arena in which these more strategic

actions become less viable and the shadow of the patent over the academic economy

recedes.

Conclusion

Scholarship in the law and economics tradition has focused on the legal purpose of

patents, on their scope and value and their impact on economic growth. While these

issues are central to our broad understanding of patents as a core institution in the

modern economy, this perspective largely ignores the impact of patents on the daily life

of scientists. By assigning patents a status equal to publications and treating them

symmetrically within the academic and commercial economies it is possible to see how

patents are far more than mere legal texts that allocate property rights. Certainly for

academic scientists in the field of mouse genetics, patents became a flexible instrument

through which they could subtly transform their own academic economy and cycle of

credit with one another. Over a two decade-long period, scientists incorporated patents

into their economy, but on their own terms. They changed the meaning of patents to

better fit with academic cycles of credit, but they also subtly shifted the ways in which

they controlled their assets and regarded their sources of credit. In order to accomplish

their daily work scientists came to master a more complex calculus of credit and control

and patenting played an important role in this new boundary work.

Perhaps the most important lesson from this episode is not so much what patents did to

change academic science, rather that it was the scientists and scientists’ own

15

organizations and leaders, not the law courts, who determined the way that patents

shaped laboratory life.

16

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