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© 2003, Gallagher & Dawsey Co., LPA
July 2003
To most applicants and practitioners, "experimental use" is the use of
a device or technology prior to patenting to determine workability. In
some cases, carefully supervised experimental use qualifies an
application for an exception from the statutory bar of filing more
than one year after public use or knowledge of an invention, on the
grounds that an invention may not be fully reduced to practice before
experimentation is completed. (See this Newsletter, "Experimental
Testing or Public Use?", available at www.invention-protection.com for
more)
However, a different doctrine of academic experimental use has been
dealt a blow that has severe implications for university and other
researchers. In Madey v. Duke University, the Court of Appeals for the
Federal Circuit rejected a contention by Duke University that as a
non-profit educational establishment, it was incapable of patent
infringement for activities that were solely educational, academic, or
experimental purposes.
Citing back to a 1976 case, the Court stated that this experimental
use exception is "very narrow and limited to actions performed 'for
amusement, to satisfy idle curiosity, or for strict philosophical
inquiry.'" The fact that Duke may not have used patented technology in
a directly commercial pursuit was not determinative, as the court
applied a test of "slightest commercial implication." What makes this
test most damaging is the court's definition that "commercial
implication" can extend to such traditional academic pursuits as
education, securing research funding, and recruiting students and
faculty. Given the breadth of this "commercial implication," many
wonder if academic experimentation using patented technology can
continue. Also, from a procedural standpoint, the court placed the
burden of proof on allegedly infringing universities to prove any
experimental exemption, and not on the inventors to prove that the
activities were non-experimental.
There will be further developments in this area. Duke, along with
other universities, has petitioned the United States Supreme Court for
review during the term beginning in October 2003. A general statutory
research exemption overturning this decision may be pressed in
Congress. An interesting issue is the extent to which research may be
diverted from the U.S. to countries that have a more favorable view of
research exemptions. (see related article this issue on "Biotech
Rights") Research exemptions appear on the patent laws of other
countries, most particularly Japan and Germany. In some cases, these
exemptions are quite broad, as, for example, the German statute even
allows for some research conducted for commercial purposes. Similarly,
the Japanese Patent Law, at Section 69(1) states "the effects of the
patent right shall not extend to the working of the patent right for
the purposes of experiment or research." |
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