Tuesday, June 07, 2005

Further discussion of research exception

In "Recent Development of the Experimental Use Exception," (The Legal Intelligencer, May 23, 2005), Kim R. Jessum writes:

AIPLA adopted a resolution in March 2004 and from the
language of that resolution has proposed statutory language to codify
the exception in the Patent Act. The resolution states that AIPLA supports,
in principle, legislation to codify an exemption from infringement under
which uses of a claimed invention related to scientific, research or experimental
inquiries are exempted as acts of infringement.

The proposed statutory language reads as follows:

"The rights granted to the patent owner under Section 154 and acts
of infringement described in Section 271, shall not extend to making or
using the patented subject matter for purposes related to scientific or
philosophical inquiry, including to discern or discover (1) the validity of the
patent and the scope of protection afforded under the patent; (2) features,
properties, inherent characteristics or advantages of the patented subject matter;
(3) methods of making or using the patented subject matter; and (4)
alternatives to the patented subject matter, improvements thereto or substitutes

In addition, the exemption under this subsection from the rights
granted under Section 154 and described in Section 271(a) shall extend to
making or using the patented subject matter in activities that are incidental to
preparations for commercialization of an alternative to the patented
subject matter. Otherwise, subject to Section 271(e)(1), making or using
patented subject matter in connection with preparations for its use in commerce
is encompassed by the rights granted under Section 271 (a)."

However, most commentators have remarked that the Supreme Court will
not likely address the experimental use exception in Integra. Therefore,
unless Congress enacts legislation or the Supreme Court addresses the issue in
another case, the exception will continue to be narrowly applied.
Unfortunately, because of the uncertainty of application of the exception, it will be necessary for universities and other institutions to decide whether to conduct
research using patented inventions and risk being sued for infringement.

Comment: One notes that the only university-written amicus brief in Merck v. Integra [that of WARF] supported the position of the patentee Integra, not the position of the "researcher" Merck.

Additional comment: WARF has been active in suing people. Note in August 2005:

International Business Machines Corp. on Tuesday, Aug. 30, became the latest company to settle charges of infringing a patent owned by the University of Wisconsin's research arm in making computer chips.

The Wisconsin Alumni Research Foundation, which owns patents granted to UW researchers, had accused IBM in a federal lawsuit of infringing on patented technology in making and selling copper-based chips.


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