Patent Infringement Exemption for Research?

cheesedog writes "It has been said that 1/5th of all scientific research projects in the U.S. are currently being stifled by patent claims. Well, it looks like the Senate has taken notice, with a recent proposal that has made it into the PACE Education and Research Act that could extend an exemption from patent litigation for scientific research. The Act also proposes treating specialized industries (such as software and business methods) differently than traditional patent areas."

Comments

and...?

[joe 155]

This will do very little though, becuase scientific research is mainly done at universities which have an eye on the end results for profit. The universities will not sponsor extensive research on projects which they will not be able to change into profit. Even if people can do the research for their PHD's then there will be a wealth of information in the "wouldn't it be nice if we could use it catergory"

How does this help?

[ZachPruckowski]

As I see it, this will allow people to do research on things that would have been blocked by patents otherwise. But doesn't that make products related to that research completely poisoned? I mean, it'd be fine for anyone doing the research for the sake of the research, but you'd have major IP issues if you tried to market something derived from the research, right?

Re:How does this help?

[samkass]

On the one hand, it means the only people allowed to use the research for commercial purposes are the owners of the original patent, so universities effectively become research arms of the patent owners. On the other hand, the researched extensions to the patent are themselves unpatentable, and potentially gets the technology into the public domain sooner and cleaner. (Remember patents don't go on "forever", like copyrights effectively do under Disney's America.) Otherwise, most patents get subsequent filings to add minor features in order to extend their lifetimes.

So I see this as a step in the right direction. There's no question in my mind that patents are a necessary and good thing for any innovation-based society, but obviously there are some area of it that need refinement.

Big plus for

[Marxist Hacker 42]

"May change the world if it works" inventions of the type that will make money even if you can squeeze out only a penny above patent licensing- because it allows you to find out if something works *before* you pay for patent licensing.

I've got just such a device in mind for repurposing high level nuclear waste- but the threat of patent litigation means somebody else will probably beat me to it; there's at least six patents on only tangentially related technology involved, the whole thing is made up of what are basically expensive off the shelf parts (well, except for the fuel, which is an expensive, highly controled, on the shelf part, but I'm sure I could convince the IAEA and the DEA to let me have a tankfull of Hanford's finest if I donate the new above ground, computer monitored tank to pump it into before it leaks into the Columbia).

Research? Improvements?

[SchrodingersRoot]

Well, I'm not sure what would qualify one as a "researcher."
Since research often has some sort of financial aspect, this leads me to wonder where the breakpoint would be, and how effective it would be.

I mean, I can see how patent infringement shielding would be useful in teaching (if not already present), but research is often done with end-result: profit in mind. And if certain (synergistic, for example) technologies were developed using research that was protected by the shielding, where would that patent fall? Improvements on a patented idea?

I guess I don't know enough about what sort of research is affected by patent infringement litigation.

I mean, the patent system is a mess. We all know that. And I somehow feel that this is a Good Thing(TM). I hope there'll be improvements. But I still wonder...

However

[Billosaur]

Ok, so I'm a researcher, and you've given me the freedom from patent restrictions to allow me to go ahead with my research and Company XYZ can't stop me because it's for "research" and not personal gain. Don't I eventually end up becoming a de facto researcher for Company XYZ? They still hold the patents and could make use of my research to improve their products, couldn't they? And where's the economic incentive for me to do this research?

PACE Act = BAD!

[diakka]

As Winston Wolfe of Pulp Fiction fame eloquently put it.. "Let's not start sucking each others' dicks just yet."

While this does sound like a good proposal, it is only one part of the PACE Act. There is one measure in this act that I found very disturbing and that is the establishment of a "First inventor to file system." Basically, that sounds like it would kill off any prior art claims that had not been a part of a previously filed patent. I wouldn't be surprised if it didn't increase the number of BS patents filed because companies would be scrambling to file for things just to get it on record. Very Scary.

Re:Finally

[i_should_be_working]

Yeah, he's gone to court to do some/all of that stuff. It's settled now, he's continuing his research. But he shouldn't have had to worry about it in the first place. What a PITA waste of time.

Hopefully this patent reform would end such bullshit.

Be very careful here

[deblau]

Disclaimer: IANAL, this is all my own analysis.

The issue is not as straightforward as you might think. First, one common bar to receiving a patent is prior art, which is generally covered in 35 U.S.C. 102. The big hammer for prior art made by someone else is 102(b), which says that you can't get a patent if your invention was "in public use" or "on sale" in the US more than a year prior to the filing date of your application. The "on sale" part is fairly easy to understand, but has a few quirks that I won't go into now. The "public use bar", as it's called, is what we're talking about here.

There is a famous Supreme Court case that says experimental use of an invention, even in the public, isn't a "public use". Such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 134-35 (1877). This is the "experimental use defense" to the public use bar. You may think to yourself, that's all well and good, researchers are performing experiments, that must be experimental use, right?

Not so fast. Read the Federal Circuit's take on experimental use, Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002). The court ruled that use does not qualify for the experimental use defense when it is undertaken in the "guise of scientific inquiry" but has "definite, cognizable, and not insubstantial commercial purposes." 307 F.3d at 1362. Here's their reasoning:

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 institution's 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 lucrative research grants, students and faculty. Id.

Regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or non-profit status of the user is not determinative. Id.

To sum up: even though a university may be conducting research with no perceived commercial benefit, there are indirect benefits. If the exception for research were broadened, schools would receive a windfall. So would anyone else claiming "I'm not quite done with my invention yet, but isn't it pretty." (Think "Google whatever -- still in beta!") There's an argument to be made that this is OK, but that's a matter of opinion and public policy.