Doug Tygar points to a front-page article in yesterday’s Wall Street Journal about a lawsuit that raises troubling questions about researchers’ ability to use patented technologies for experimental purposes.
Patent law, which makes it illegal to make or use a patented invention without permission of the patent owner, has an exception for experimental use. The exception, as I understand it, applies only to non-commercial, curiosity-driven experiments.
John Madey invented, and patented, an important technology called the free-electron laser (FEL). He was a professor at Duke University, where he headed an FEL laboratory. Then he was ousted after a nasty squabble with Duke, and he moved to another university. Duke continued to operate the FEL.
Madey sued Duke for patent infringement, for using the FEL without his permission. Duke wrapped itself in the experimental use exception, but Madey argued that Duke, in its use of the FEL, was not engaged in idle inquiry but was carrying on its business of research and education. The Federal Circuit Court of Appeals agreed with Madey that Duke was not eligible for the exception:
Our precedent clearly does not immunize use that is in any way commercial in nature. Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer’s legitimate business, regardless of commercial implications. For example, major research universities, such as Duke, often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects unmistakably further the institutions’ legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve, for example, to increase the status of the institution and lure studentss, faculty, and lucrative research grants.
It’s hard to see, in light of this decision, how anybody could ever qualify for the experimental use exception.
If this decision stands, it could have a big impact on university researchers. Up to now, researchers have been free to concentrate on discovery rather than patent negotiations, and to build and use whatever equipment was necessary for their experiments without worrying that somebody would sue to shut down their labs. Now that may have to change change.
Here’s a tip for law students: current trends indicate hiring growth in research universities’ general counsel offices.
