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Patenting Planets?

[Cross-posted at Conglomerate]

The ongoing scholarly dialogue about the respective regulatory roles of law and social norms rarely plays out in the real world with the two poles clearly distinguished. Today’s New York Times, however, reports on a spat among astronomers, each of whom claims to be the first to have identified a new celestial body — the ball of ice known as 2003 EL61, which some say should displace Pluto as the outermost planet in our solar system. [Update/Correction: The dispute centers on 2003 EL61, but the “tenth planet” discovery is a different object, 2003 UB313.]

The quirk, here, is that the two teams in contention were not working (entirely) alone. The American team, based at Caltech, had been tracking the object for some time, and it posted observer logs — data about where its telescope was pointed, and when — on its website. Logs of visits to the website apparently confirm that members of the Spanish team that claimed credit for the discovery visited the site shortly before the announcement. The Spanish team did not credit the Americans for the data. The Americans have accused the Spanish of stealing their data; the Spanish have replied that the Americans had no business “hiding” the object that they had found. (The American team has posted a detailed account of the episode, and a defense of its position.)

In the first place, the issue is one of scientific ethics:

In the absence of further information, exactly what Dr. Ortiz did with the observing logs is likely to remain a mystery. Were he and his colleagues only checking to see if Dr. Brown’s object was the same as theirs to confirm their own discovery? Or did they use the information to find the object and beat the Caltech team?

Both actions would violate scientific ethics but with varying degrees of seriousness, astronomers said.

John Huchra, an astronomer and the vice provost for research policy at Harvard, said that at some level it is all right to use knowledge of what a rival group is doing. “If you hear them give a talk at a conference, it’s fair game,” he said, “but if you found it in the trash bin or the copier, that’s not kosher.”

There is no good mechanism among astronomers for adjudicating the dispute, though if it is determined that a breach of ethics occurred, there are a variety of disciplinary remedies available:

If you used tainted information to beat out the other group, [Huchra] said, the director of the observatory (the only authority in this system) could forbid publication and banish you from the telescope. “If they were just confirming,” he went on, “there’s still a tinge here. It’s not kosher to point your telescope at somebody else’s object, unless you ask.”

We’re back in the domain of Pierson v. Post. An IP lawyer would recognize at once that this is precisely the sort of dispute that the patent system is designed to prevent. An inventor gets a choice. Keep the invention secret, but suffer the risks that it will be discovered (through fair means), and that even independently, a competitor will come up with the same thing. Or, disclose the invention and earn a patent (if the invention is new, nonobvious, and useful) that provides market exclusivity for a term of years.

Should 2003 EL61 be patentable subject matter? No — but conflicts like this raise questions about limits of social norms in a community that is organized around the concept of priority. Patent lawyers learned that lesson long ago. Commercial lawyers learned that lesson, too; perhaps scientists could learn a thing or two by studying Article 9 of the UCC. The Americans claim that they should not be criticized for disclosing their data on a public website, where anyone (even a competitor) could see and use it. This view, they say, is “anti-science.” That’s nuts, just as it would be nuts to say that Article 9 is anti-commerce or the Patent Act is anti-technology. If you want to keep a secret, don’t post it on a public website. Or as someone once said in a somewhat different context, trust, but verify.