In Part 1 I wrote that there are actually two doctrines with the same name: the one that handles patentability and the one that handles infringement. And queue the surprise: there are actually two experimental use exemptions to patent infringement – common law experimental use exemption (developed by a long line of judicial decisions) and Hatch-Waxman exemption (enacted by Congress in 1985 and applies only to drugs and medical devices). There are many papers that study the history of this doctrine (one of them being http://www.nystar.state.ny.us/nl/nlassets/pdf/stlc1.pdf), but this post is only about what a researcher has to know regarding this doctrine.
Today I will write about the common law experimental use exemption, as the other one concerns rather narrow domains.
To really understand why experimental use exemptions exist, we have to get into the core of the patenting system. A researcher gets a 20 year (from application filing) US-backed protection for his invention iff he clearly discloses his implementation. This way, the public can understand the invention and build on the knowledge just gained to innovate further. The question comes “If I know the invention described in the patent, but I can’t use it because I will infringe the claims, then how can I use it?” The answer is kind of “No” and here is kind of the answer.
Well, there have been many interpretations to how one can be exempted from patent infringement by the common law experimental use. From Justice Story’s opinion in Whittemore v. Cutter (in 1813 he wrote that “it could never have been the intention of the legislature to punish a man, who constructed a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.”) to the CAFC Appeal on Madey v. Duke , the doctrine evolved to its current status.
In this last decision, the CAFC hold that not only “commercial intent” can prevent using the common law experimental use exemption, but all “legitimate business objective”. In Duke’s case, a legitimate business objective would be luring lucrative research grants. In a common researcher’s case, a legitimate business objective could just as well be “ascertaining the sufficiency” of a patented machine. Is it just me or is this the opposite direction from Justice Story’s opinion?
Instant Blog 