IP @ National Academies Newsletter

[Ann Okerson <ann.okerson@yale.edu>]

We don't normally reproduce entire issues of newsletters, but this one 
could be a keeper and we want to draw your attention to it. The Moderators

__

The first edition of the "IP @ National Academies" Newsletter follows.  
If you are interested in receiving future editions of this newsletter,
please follow the subscription instructions at the end of the newsletter.

======================================================
IP at the National Academies Newsletter, Vol. 1, No. 1
======================================================

Editor's Introduction

Welcome to the first edition of the "IP at the National Academies"
Newsletter. In this quarterly round-up, we plan to offer news from ongoing
National Academies projects that relate to intellectual property (IP)
issues, as well as announcements of upcoming events, recent and
forthcoming publications from the National Academies Press, and occasional
topical features on matters we consider of significant public interest.

Future editions of this newsletter will have a greater focus on "what's
new" rather than listing all ongoing projects. Additional details can be
found at the IP @ the National Academies Web site,
http://ip.nationalacademies.org/, as well as by clicking on the URLs that
are included with most of the news items in the newsletter. Past copies of
the newsletter will be archived on the IP @ the National Academies Web
site.

Questions or comments about any specific project or issue that is
described in the newsletter should be sent directly to the staff member
identified with it. All other mail regarding this newsletter should be
sent to the editor, Paul Uhlir, at puhlir@nas.edu. Directions for
subscribing to and unsubscribing from this service, as well as other
technical information related to the use of several newsletter features,
are provided at the end.

We look forward to your feedback and hope you will find the summary
information about our various IP activities interesting and useful.

Paul F. Uhlir
Director, International Scientific and Technical Information Programs
The National Academies

***************
23 April 2003
***************

1.)  FEATURE
2.)  UPCOMING EVENTS
3.)  REPORTS
4.)  CURRENT PROJECTS

************
FEATURE
************

Recent Patent Law Decision by the U.S. Court of Appeals for the
Federal Circuit
Jim Wright, General Counsel to the National Academies

For years there has been a fairly vague but general understanding within
the university research community that the use of patented inventions for
basic research and teaching falls within an "experimental use" exception
to possible claims of patent infringement.  On October 3, 2002, in a case
involving Duke University, Madey v. Duke University, 307 F.3d 1351 (Fed.
Cir. 2002), the U.S. Court of Appeals for the Federal Circuit effectively
eliminated the experimental use defense for essentially all practical
purposes at research universities.

The court emphasized that the experimental use defense is "limited to
actions performed 'for amusement, to satisfy idle curiosity, or for
strictly philosophical inquiry'" (307 F.3d at 1362).  The court indicated
that even though a research project has "arguably no commercial
application whatsoever," if such "projects unmistakably further the
institution's legitimate business objectives, including educating and
enlightening students and faculty participating in these projects," or
"increas[ing] the status of the institution and lur[ing] lucrative
research grants, students, and faculty," the experimental use defense does
not apply (id.).  "In short, regardless of whether a particular
institution or entity is engaged in an endeavor for commercial gain, so
long as the act is in furtherance of the alleged infringer's legitimate
business and is not solely for amusement, to satisfy idle curiosity, or
for strictly philosophical inquiry, the act does not qualify for the very
narrow and strictly limited experimental use defense.  Moreover, the
profit or non-profit status of the user is not determinative" (id.).

On November 25, 2002, the NRC Science, Technology, and Law Program and the
NRC Science, Technology, and Economic Policy Board jointly sponsored a
two-hour discussion of this recent court decision.  It became clear at the
meeting that there is considerable concern within various parts of the
research community about the implications of this recent court decision --
particularly in terms of its potential impact on the thinking and behavior
of university lawyers and administrators, and therefore on university
policies affecting university-based research.

In an effort to overturn the decision by the U.S. Court of Appeals, Duke
University on January 2, 2003, petitioned the U.S. Supreme Court to hear
the case.  On April 7, 2003, the Supreme Court invited the U.S. Solicitor
General to file a brief in the case expressing the views of the U.S.
Government.

*************************
UPCOMING EVENTS
*************************

SYMPOSIUM -- "Electronic Scientific, Technical, and Medical
Journal Publishing and Its Implications"

19-20 May 2003
National Academy of Sciences Auditorium
2100 C St. NW, Washington, DC

This symposium will bring together both producers and users of STM
publications to:  identify recent technical changes in publishing and
other factors influencing the decisions of journal publishers to produce
journals electronically; identify the needs of the scientific,
engineering, and medical community as users of journals, whether
electronic or printed; discuss the responses of not-for-profit and
commercial STM publishers to the opportunities and challenges posed by the
shift to electronic publishing; and examine the spectrum of proposals that
have been put forward to respond to the needs of users as the publishing
industry shifts toward electronic information production and
dissemination. One of the sessions will address copyright and licensing
issues.

The meeting will be free and open to the public, but advance registration
is required.  For additional information and registration, please visit
the symposium Web site at:
http://www7.nationalacademies.org/cosepup/E-Publishing.html, or contact
the project director, Paul Uhlir, at (202) 334-2807, or puhlir@nas.edu.

SYMPOSIUM -- A new report from the Computer Science and Telecommunications
Board entitled, "Beyond Productivity: Information Technology, Innovation,
and Creativity", will be discussed at a public symposium on Thursday, May
15, in New York at the Cooper-Hewitt, National Design Museum, Smithsonian
Institution, at 2 East 91st Street. A continental breakfast will be
available beginning at 9:30 a.m. and the panel session will begin at 10:00
a.m. The panel will be chaired by Professor William J. Mitchell, chairman
of the study committee that produced Beyond Productivity, and Dean of the
School of Architecture and Planning at MIT. Those who are interested in
attending this symposium should register with Ms. Margaret Marsh Huynh at
mhuynh@nas.edu, or 202-334-2605 (voice) or 202-334-2318 (fax).  Further
information will be available at http://www.cstb.org.

*************
REPORTS
*************

"Sharing Publication-Related Data and Materials: Responsibilities
of Authorship in the Life Sciences" (2003)

This study evaluated the responsibilities of authors of scientific papers
in the life sciences to share data and materials referenced in their
publications.  It also discussed whether more appropriate standards for
sharing data should be developed, including what principles should
underlie them, and what rationale there might be for allowing exceptions
to them.  A pre-publication version of the report is available from the
National Academies Press Web site at:
http://www.nap.edu/catalog/10613.html

"IT Roadmap to a Geospatial Future" (2003)

This workshop-based report examined the evolution of geospatial
information systems, focusing on technical issues but also addressing
their business and policy context, including IP aspects of both technology
and information access.  For more information, see the project Web site
at: http://www7.nationalacademies.org/cstb/pub_geospatialfuture.html
Contact:  Cynthia Patterson, cpatters@nas.edu

"Fair Weather: Effective Partnerships in Weather and Climate
Services" (2003)

This study examined the roles of the public, private, and academic sectors
in providing weather and climate services, seeking to identify
opportunities for better coordinating services among these different
sectors.  IP issues that were addressed include matters of ownership,
access, and publishing rights for weather-related information.  A
pre-publication version of the report is available from the National
Academies Press Web site at: http://www.nap.edu/catalog/10610.html

"Who Goes There? Authentication Through the Lens of Privacy" (2003)
Although this project focused primarily on the privacy rights of
individuals, some of the technologies involved are being designed or
applied to protect IP rights.  A pre-publication version of the report is
available from the National Academies Press Web site at:
http://www.nap.edu/catalog/10656.html

"Youth, Pornography, and the Internet: Can We Provide Sound
Choices in a Safe Environment?" (2002)

This report was requested by the U.S. Congress and examines the pros and
cons of options for protecting children from inappropriate sexually
explicit material on the Internet, providing a comprehensive discussion of
potential tools and strategies.  The report can be viewed on-line from the
National Academies Press Web site at:
http://www.nap.edu/catalog/10261.html

**************
PROJECTS
**************

"Intellectual Property Rights in the Knowledge-Based Economy" 

Curiosity about the effects of IPR developments on innovation and economic
performance led to this broad study of the operation of the patent system,
coincident with the 200th anniversary of the U.S. Patent and Trademark
Office and the 50th anniversary of the Patent Act of 1952, the principal
statutory basis of the current system.  The committee's final report and a
collection of commissioned research on litigation, patent administration
and quality, and software and biotechnology patenting and licensing will
be released later this spring.  For more information, see the project Web
site at:
http://www7.nationalacademies.org/step/STEP_Projects_Intellectual_Property_Rights.html

Contact:  Craig Schultz, cschultz@nas.edu

"Open Access and the Public Domain in Digital Data and Information
for Science"

An international symposium on this subject was held 10-11 March 2003 at
the UNESCO headquarters in Paris, and the proceedings from this symposium
will be published by the National Academies this fall. For more
information, see the symposium Web site at:
http://www.codata.org/03march-intlsymp.htm.

"The Role of Scientific and Technical Data and Information in the
Public Domain"

The proceedings from this September 2002 symposium in
Washington, DC,  will also be published this June.  For more
information, see:
http://www7.nationalacademies.org/biso/Public%20Domain%20Symposium%20Announcement.html

Contact:  Paul Uhlir, puhlir@nas.edu, for additional information about
both of these symposia.

"Licensing Geographic Data and Services"

This study will explore the profound ways in which the expanding use of
licensing by government to acquire or distribute spatial data is affecting
governmental operations and relations with the private sector and
citizens.  For more information, see the project Web site at:
http://www7.nationalacademies.org/besr/Licensing.html Contact:  Paul
Cutler, pcutler@nas.edu

"Digital Archiving and the National Archives and Records Administration"

This project will undertake an assessment of technologies for long-term
digital archiving and preservation, developing a picture of what is
currently available commercially and what should be in the near term.  
For more information, see the project Web site at:
http://www7.nationalacademies.org/cstb/project_nara.html Contact:  Jon
Eisenberg, jeisenbe@nas.edu

"Internet Navigation and the Domain Name System: Technical
Alternatives and Policy Implications"

This project will explore the future of Internet navigation and the domain
name system and examine the degree to which new technologies or new uses
of existing technology can mitigate concerns regarding commercial and
public interests, including trademark-related issues.  For more
information, see the project Web site at:
http://www7.nationalacademies.org/cstb/project_dns.html Contact:  Alan
Inouye, ainouye@nas.edu

"Privacy in the Information Age"

This project will undertake a comprehensive assessment of causes for
concern about privacy in the information age and tools and strategies for
responding to them.  For more information, see the project Web site at:
http://www.cstb-privacy.org Contact:  Lynette Millett, lmillett@nas.edu

"Beyond Productivity: Information Technology, Innovation, and Creativity"

This project on computer science and the arts addresses the impact of IP
protections on artists.  It notes the value of open source technology for
arts applications, relating that to artists' interests in being able to
modify systems or content for unconventional purposes.  For more
information, see the project Web site at:
http://www7.nationalacademies.org/cstb/project_creativity.html Contact:  
Alan Inouye, ainouye@nas.edu

"Shortening the Time Line for New Cancer Treatments"

This report will include an intellectual property chapter covering
technology transfer among universities, industry, and government. Past
difficulties will be surveyed, and a new section will describe successful
industry-university agreements, mainly involving contracts.  For more
information, see the project Web site at:
http://www.iom.edu/IOM/IOMHome.nsf/Pages/NCPB+Timeline Contact: Hellen
Gelband, hgelband@nas.edu

*************************

Unsubscribe to this list at:
http://www8.nationalacademies.org/mail_list/default.asp?list_id=401&action=unsubscribe

Subscribe to this list at:
http://www8.nationalacademies.org/mail_list/default.asp?list_id=401&action=subscribe

IMPORTANT NOTICE: Some e-mail software may not receive
Internet links that are referenced in the newsletter. You may need
to copy the Web address and paste it into your Web browser.

Some links may have audio components that require Real Player
for playback. To obtain a copy of Real Player, please visit
http://www.real.com/.