Biotechnology, Health and Patents as Private Governance Tools: the Good, the Bad and the Potential for Ugly?

Abstract

This article argues that patents, although often viewed primarily in terms of their economic or incentivising function, also have an important but often overlooked private governance function. Inherent in the grant of a patent is the right given to the patent holder to exclude others from using that invention, and to set the parameters around the terms of use for the duration of the patent (via licensing). This right can in turn impact the trajectory of the patented invention and also multiple downstream inventions, potentially dictating uses in that field for the duration of the patent. Moreover, existing avenues offering potential oversight around the broader implications of decisions on patent use and grant, such as the morality provisions for patent grant, compulsory licensing provisions or mechanisms to challenge patents post-grant are limited in their effect in practice. Hence, patent holders exercise such governance functions with limited, if any, external oversight. Furthermore, patent holders’ decisions on patent use can have significant consequences that are particularly acute for health-related biotechnologies. Accordingly, this article argues that in the context of health-related biotechnologies there is a need for greater consideration and oversight over patent holders’ private governance function.

This article is published in the Intellectual Property Quarterly (2020). A final version is available to access via Westlaw, the full citation is: Aisling McMahon, “Biotechnology, health and patents as private governance tools: the good, the bad and the potential for ugly?” (2020) 3 Intellectual Property Quarterly 161-179.

Keywords: Patents, Private Governance, Biotechnology, Morality Provisions