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

Text

[_Sharp'r_]

text of the bill.

It has over 40 co-sponsors (From Allen to Obama) and doesn't look like it's going to become a partisan battle, so maybe it'll actually pass.

Re:Text

[Peyna]

Note from the text that this law doesn't actually change anything. It's just the Senate coming out saying "We think these reforms should be done," but doesn't compel them to actually do them.

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?

Finally

[i_should_be_working]

Finally, they are starting to recognize that patents can actually deter progress.

There's a geologist in my department who developed a technique for measuring earth density. This could be good for looking for oil or other valuables underground. He published his work, like all scientists. So some mining/prospecting company read up on it, patented a related method and then tried to stop him from doing any more research on it, lest he give away 'their' secrets to their competitors.

Insane.

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...

Not a good thing

[Peyna]

First of all, the section dealing with patent reform actually doesn't change anything. It would just say that the Senate thinks Congress should enact legislation to make such changes.

However, I bring your attention to Sec. 321 (3) (A):

"Congress should implement comprehensive patent reforms that--
(A) establishes a first-inventor-to-file system"

While this would make the patent office's job easier (prior art is restricted to everything filed with them), it means that prior art that is not filed is no longer a defense.

First to file is not good. The research exception would be insignificant next to this change.

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.