Madey v Duke University and the Experimental Use Exception in US Patent Law

Recently, the US Supreme Court rejected Duke University's appeal for review of a ruling of the Court of Appeals for the Federal Circuit that had found it liable for patent infringement. The patents in question (US Patent No's 4,641,103 and 5,130,994) relate to a free-electron laser invented by the plaintiff, Madey.   During the District Court trial, Duke University relied on the experimental use defense to patent infringement, maintaining that, as a nonprofit research institution, its use of the laser was exempt from some patent rules.   The District Court accepted Duke University's position. However, the Court of Appeals for the Federal Circuit reversed the decision (see 307 F 3d 1351 (Fed Cir 2002)), finding that the lower court had improperly applied what the appellate court termed "an overly broad version of the very narrow experimental use defense to patent infringement".   The Court of Appeals held that, regardless of profit or non-profit status, the experimental use defense was very narrow and strictly limited, and only applied if use of the patented invention was "solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry". Currently, the Canadian Patent Act does not include an experimental use exception from patent infringement.   In June 2002, in its report to the Government of Canada Biotechnology Ministerial Coordinating Committee, the Canadian Biotechnology Advisory Committee proposed that the Canadian statute be amended to include an experimental use exception to use a patented process or product either privately and for non-commercial purposes, or to study the subject matter of the patented invention to investigate its properties, improve upon it, or create a new product or process. To date, no such legislative changes are proposed for the next round of amendments to the Canadian Patent Act scheduled to take effect in January 2004. Universities may wish to consider whether, despite the lack of a specific legislative exemption in Canada, they could bolster their position in any future court challenge by implementing policies that attempt to define the limits of "experimental use" within a university setting. For the Court of Appeals' decision see: http://makeashorterlink.com/?V512157B6. A law review commentary can be found at: http://www.law.duke.edu/journals/dltr/articles/2003dltr0012.html. Summary by: Kathryn Schubert