Freedom to Experiment: Toward a Concept of Inventor Welfare

Journal of the Patent and Trademark Office Society, Vol. 90, p. 245

NYLS Legal Studies Research Paper 07/08-31

24 Pages Posted: 14 May 2008 Last revised: 28 Dec 2013

Rudolph J.R. Peritz

New York Law School


Almost twenty-five years ago, the Federal Circuit turned unauthorized experimental use of another's patented invention into patent infringement. As with other patent doctrines standing at the intersection of exclusion and competition, the court has taken a hard line in favor of exclusion. The hard and fast rule here is particularly significant because experimental use is the most important form of competition in the patent domain. Over the same period, the Supreme Court has consistently rejected the Federal Circuit's hard line approach. The Court's decisions, most recently in eBay and KSR, have favored more nuanced approaches and, as a result, opened the patent domain to increased competition. The Supreme Court has not spoken to the experimental use defense.

This article examines the demise of the currently comatose experimental use defense and then reformulates it into a robust doctrine that better reflects the constitutional policy of promoting progress in science and useful arts. It begins by showing how a distended profit logic emerged in the 1980s to turn the virtue of independent experimentation into the vice of patent infringement. This inflated profit logic is an overstatement of incentive theory, the intuitively attractive precept that has long dominated patent policy despite its profound difficulties. More broadly, the current jurisprudence short-circuits analysis of interactions between key patent law conceptions of public benefit and private right, idea and invention, process and product. In this light, the second section builds the foundation for a revised patent policy that is more faithful to the constitutional norm of promoting progress and practically superior to the current approach and its unworkable incentive theory. In particular, the section introduces a concept of inventor welfare and, with it, begins to reshape dynamic efficiency as the logic of progress. The final section presents a schematic phenomenology of the invention process to serve as the framework for restoring independent experimentation to its vital role in the constitutionally inscribed process of invention.

Keywords: patents, experimental use, invention, progress, competition, dynamic efficiency, patent infringement, innovation

Suggested Citation

Peritz, Rudolph J.R., Freedom to Experiment: Toward a Concept of Inventor Welfare. Journal of the Patent and Trademark Office Society, Vol. 90, p. 245; NYLS Legal Studies Research Paper 07/08-31. Available at SSRN:

Rudolph J.R. Peritz (Contact Author)

New York Law School ( email )

185 West Broadway
New York, NY 10013
United States

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