Zhen Lei and Brian D. Wright reply:

To a reader unfamiliar with intellectual property (IP), Noonan's thesis might well be persuasive. Researchers have problems with material transfer agreements (MTAs), not patents. MTAs are different from patents, and more “akin to personal property than IP.” Indeed, they are “limited to tangible items that can be transferred and exclude IP, such as know-how, trade secrets and methods.” Noonan implies that MTAs are not used in the transfer of IP, so scientists surveyed in our paper1 are “woefully misinformed” when they attribute problems with MTAs to the recent proliferation of patents and other IP.

Scientists who rely on the counsel of attorneys or Office of Technology Transfer personnel, or draw on their own experience of patenting tangible research tools, understand that patentable compositions of matter, including those that are research tools, are IP. They also understand that their Offices of Technology Transfer have, since the 1980 Bayh-Dole Act, taken a greater interest in patenting and other means of IP protection, and urged scientists to use MTAs in sending research tools to others or receiving materials from peers.

For example, the relevant University of California, Los Angeles website2 advises: “The purpose of the MTA is to protect the intellectual and other property rights of the provider while permitting research with the material to proceed.” Furthermore, “If the material is not yet patented (or, publicly disclosed) and of possible commercial value, a material transfer agreement with secrecy provisions may be required.” For scientists on the research frontier, the tools they want to exchange, often unpatented at the time of transfer, may be protected by MTAs as part of a strategy for preserving rights to royalties, and other benefits from patents or other IP related to inventions arising from the materials transferred. Another aspect is that MTAs might restrict use of materials in ways that go beyond what a patent would protect.

Since 1980, patenting by academic institutions has greatly increased. MTAs on materials sent from academia and industry “are often associated with having patent rights to the material in question”3. Scientists surveyed in the United States and Japan by the American Association for the Advancement of Science (AAAS; Washington, DC, USA) report that ∼30% of the patented technology they acquired was transferred via MTAs; a substantially smaller portion was acquired by licensing4. It is not surprising, then, that the scientists we surveyed perceive a connection between the surge in patenting and the proliferation of MTAs on transferred tools.

Indeed, the connection between patenting and MTAs is evident in the behavior of our own respondents. When the nonpatentees among them provided tools to academic peers, they used MTAs in only 12% of the cases, whereas formal contracts (predominantly MTAs) covered 34% of such transfers by patentees. (Noonan will surely concede that these patentees should be familiar with the distinctions among patents, MTAs and other types of IP. Nevertheless, patentees agree with their peers on the net effects of intellectual protection on research.)

Noonan conjectures that the greatest impediment to tool exchange might be academic competition. However, our respondents anticipate only moderate difficulty with rivalry, and Noonan's conjecture misses the nuance that our scientists report no recent change in such competition, whereas they have seen their problems with tool exchanges increase. Moreover, in none of the 17 cases covered in our follow-up interviews was academic competition the dominant factor impeding access to a research tool.

Although we do agree with Noonan that there is a need to distinguish between 'patents' and the broader term 'intellectual property', unfortunately, he honors this distinction in the breech. Contrary to Noonan's claim, our results do not conflict with other academic reports. These focus on the direct effects of existing patents. For example, only questions 48 A–F of the four AAAS reports5,6,7,8 ask specifically about IP protection as such. The responses, for large multidisciplinary samples of scientists in four countries, are in general remarkably supportive of our findings, though they are not discussed in any of these reports.

Thus, the paradox encountered by Noonan is resolved. Academic scientists are not greatly restricted by the need to avoid infringing existing patents because they are rarely aware of such patents and the tools they use are often too new to be patented. Even so, their work is, overall, affected indirectly by the institutional promotion of the use of MTAs, induced largely by the proliferation of patenting in academia and in industry, and this effect outweighs any incentive-related effects of patenting.

Finally, we have tried to avoid hyperbole and oversimplification in discussing this complex issue. We believe that patenting of research tools rarely 'stifles' a research project. Rather, proliferation of patenting and other IP protection of research tools has led to an increase in the use of MTAs. Resulting difficulties with research tool exchanges make the research progress of the agricultural biologists we surveyed sufficiently slower or more difficult that they believe that the costs of IP protection outweigh the benefits.

We find no reason to believe that these scientists are misinformed about these issues. It is possible that scientists fail to perceive some important social benefits from patenting their research tools. If scientists' views are surprising to some who have confused the effects of existing patents with the full implications for research of the proliferation of IP, then they are all the more valuable as a contribution to an ongoing debate.