The Experimental Use Exception to Patent Infringement: Do Universities Deserve Special Treatment?
Posted: 4 Nov 2005
Date Written: August 19, 2005
To the extent university research has become more of a business than a philosophical enterprise, this article analyses whether it is fair to treat universities' patent infringement differently from their industry counterparts.
The experimental use exception to patent infringement permits the use of another's patented device when such use is for philosophical inquiry, curiosity, or amusement. A relatively recent Federal Circuit opinion, Madey v. Duke University, has spurred much displeasure with the doctrine. Madey holds that a research university is not immunized under the experimental use exception when its researchers engage in research using patented inventions. The case has created an outcry because over the years universities appear to have assumed, albeit incorrectly, that their research was protected under the doctrine and thus their scientists need not seek permission from patent owners before using patented devices.
Virtually all commentators since Madey have criticized the ruling and its effect on the experimental use exception. This article enters the discussion to offer a different and opposing viewpoint. It rejects the view that universities deserve special treatment, and it takes the position that a narrow experimental use exception is consistent with existing law, consistent with sound public policy, and appropriate for the current nature of university research.
Furthermore, unlike most other commentators, it proposes that the Madey opinion will not cause the death of all research and innovation. The article examines several pragmatic considerations, as well as the United States Supreme Court's ruling this summer in Merck KgaA v. Integra Lifesciences I, Ltd., in support of that position. It concludes with a recommendation as to when it might be appropriate for Congress to consider any expansion of the experimental use exception.
Keywords: experimental use exception, patent infringement, university research
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