September 23, 2020

Experimental Use Exception Evaporating?

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.


  1. Richard Premont says:

    It’s a bad legal precedent legal to set, since as you state, if researchers cannot tinker with patented things without paying royalties, all scientific research would basically come to a grinding halt. As a biologist, there is no way I will EVER pay royalties to someone who has patented some use of a natural gene, for example, just as I would never ask royalties for research use of any gene I have patented. That some research leads eventually to sellable products, or that universities are in the “business” of selling education seems a poor justification for disallowing an exemption that was originally intended for just such users. Then again, we have courts agreeing that we apparently have no right to political free speech before an election because money might corrupt the process, but I digress.

    Being at Duke and knowing some of the folks involved, I have seen pretty close-up this generally ugly situation. The unacknowledged cause of this mess was that the University asked a researcher to no longer be the Principal Investigator of his own project, and then refused to let him take his equipment (the FEL) with him when he then left for another university. They were greedy. I suspect Duke thought the patent exemption argument was such a strong one that the real issue of actual ownership of equipment – paid for by a mix of university and federal funds – never really was argued.

    The upshot is that now we researchers all need to be worried about techniques and equipment we all use every day.

  2. The article from The Scientist is over 18 months old, do you know if SCOTUS has accepted the case or otherwise disposed of it? If Duke loses I think this will cause a huge upset in academia. Then again, as one of the DJs on KFOG was saying this morning, it is all about the money everywhere you look.

  3. For a different viewpoint, see Stephen Bainbridge’s take.

    FWIW, I think that universities would have a much easier time defending the exemption if they weren’t putting so much effort into ‘monetizing’ research through patents and other arrangements.


  4. I’m an MBA student at a large university. I’m getting a full scholarship, plus a stipend, in return for commercializing the researchers’ ideas. The school provided me with two IP lawyers, who have three basic responsibilities:

    1. Make sure the technology doesn’t infringe any existing patents,
    2. Patent the technology, and
    3. Make sure that no patents were violated during the development of the technlogy.

    In my view, there is at least one major university that has been strictly differentiating between non-profit research and commercial research, and based on how the process is streamlined, I assume there are other similar schools. This case strikes me more as Duke’s mistake than an attack on universities.

  5. No trackbak here, so:

    Ending Academia?

  6. Randy Zagar says:

    What about Free/Open Source Software?

    With the Bnetd v. Blizzard case slamming Bnetd on the non-commercial aspects of their software, does that mean that F/OSS gets a “Get out of (patent) Jail Free” card?

  7. In many industries, one is asked to sign over their invention rights to the corporation one works for. Is this not the case in academia? If a research professor invents something, while using university-funded research facilities, earning a university-provided salary, and being assisted by university-attending graduate students, he still gets to own his own invention?

  8. Richard Premont says:

    To answer Tim: Not exactly. At most universities, the inventors (which may include staff, students and postdocs as well as the professor) sign away a fraction of their ownership to the university. In many places this is a 50:50 split, thus covering the university’s interests and rewarding the actual inventors. To make it more complex, many of these inventions are also made using government grant funds, adding a potential third party to the mix. At least with NIH and NSF grants, the government has decided to not seek a percentage of the patent rights.

    The complication in the Duke FEL case is that Dr. Maddey came to Duke – and brought his laser – already having patented key aspects of the device and its operating principles. Duke had no part in those earlier patents. Then the actual laser was substantially modified over time. When he left Duke, he obviously wanted to take his equipment too, while Duke clearly wanted to keep it. Deciding what one entity owns a device cobbled together over time and using many funding sources should have been the key issue in this case. The earlier patents were a side issue that took over the entire case, and I fear that no one wins here.

  9. This reminds me a bit of a post I put in my own blog relating to a recent court case on a different matter, but the principal was the same:

    There is a certain protection under law afforded those who qualify (in my case, it was first-sale doctine under copyright law), and a court recently ruled that a particular “sale” was in fact not a sale (software sale in a store), and therefore was not protected.

    However, by parallel argument, you don’t buy books, CDs, tapes, DVDs, etc. and they would also not be protected because the actual content is not “sold”, rather a copy of it is provided to you for a particular use. If the case is allowed to stand, this protection that was specifically written into law will be ivalidated.

    Its a bit of a disturbing trend, and I think we need to lay down the law on the sanity of IP claims in general (whether they be patents or copyrights). Right now the law is being laid down, but in a way that doesn’t really make any sense.

    You can read about the case here.