Protecting Academic and Non-Profit Research: Creating a Compulsory Licensing Provision in the Absence of an Experimental Use Exception

By Thomas, Kimberly M. | Santa Clara Computer & High Technology Law Journal, January 2007 | Go to article overview

Protecting Academic and Non-Profit Research: Creating a Compulsory Licensing Provision in the Absence of an Experimental Use Exception


Thomas, Kimberly M., Santa Clara Computer & High Technology Law Journal


Abstract

The experimental use exception permits researchers and their institutions to make certain uses of patent inventions for purposes of experiment or research. Unfortunately, this judicially created doctrine is applied infrequently and is interpreted narrowly. Thus, in most cases, researchers do not have a patent infringement defense under which they can conduct basic research. This comment argues that a compulsory patent licensing provision based on a reformation of the Bayh-Dole Act may solve this problem. This comment analyzes several economically developed foreign nations that use patent compulsory licensing provisions as a base for the U.S. implementation. Section II discusses the history of the U.S. experimental use exception. Section III discusses the impact and implications of the Madey v. Duke University decision on U.S. research. Section IV gives the doctrinal background on the theory of compulsory licensing, international treatment of compulsory licensing, and the purpose of Bayh-Dole Act in the United States. Section IV also discusses how the U.S. can utilize the ideas of other countries to reanalyze and amend the Bayh-Dole Act to produce our own compulsory licensing legislation in light of a non-existent experimental use defense. Section V provides some final observations on compulsory licensing.

I. INTRODUCTION

In the United States, the common law experimental use exception permits researchers and their institutions to make certain uses of patent inventions for purposes of experiment or research. (1) The exception is a favorable defense against a claim that the accused researcher has infringed a valid patent. The exception is neither a part of the patent granting process nor is it within the jurisdiction of the United States Patent and Trademark Office. (2) Instead, the exception is under the jurisdiction of the courts whenever a patent infringement case is before it. (3) In short, one must look to commercial practice, legislation, and past court decisions in order to understand the nature of the exception. (4)

While the courts recognize the exception to patent infringement, this judicially created doctrine is described as very narrow and rarely applied. (5) In particular, the exception applies only for actions performed "for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry." (6) Further, the exception is not applied if there is the slightest hint of a commercial application. (7) This would also exclude non-commercial use that is consistent with legitimate business. (8) In short, the U.S. does not possess a 'much-needed' patent infringement defense that researchers could utilize for conducting basic research.

Through compulsory licensing, the government can compel a patent holder to license the patent, allowing for production and distribution of patented products to the public. (9) This comment argues for a patent compulsory licensing provision, with an emphasis on protecting academic research in the areas of public interest. Further, this comment suggests reformation of the Bayh-Dole Act, (10) a federal technology transfer policy, as the conduit to enact a compulsory licensing provision. In addition, this comment will analyze several economically developed foreign nations that use patent compulsory licensing provisions as a base for the U.S. implementation. Section II discusses the history of the U.S. experimental use exception. Section III discusses the impact and implications of the Madey v. Duke University decision on U.S. research. (11) Section IV gives the doctrinal background on the theory of compulsory licensing, international treatment of compulsory licensing, and the purpose of Bayh-Dole Act in the United States. The analysis in Section IV will evaluate the compulsory licensing schemes and legislation that other nations have implemented to benefit their nation's public interest. In addition, this part of the comment will discuss how the U. …

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