The United States Patent and Trademark Office (USPTO), Department of Commerce, recently announced an interest in collecting the public’s views on the current state of the common law experimental use exception and whether legislative action should be considered to enact a statutory experimental use exception.
The Experimental Use Doctrine defines a historical (dating back to 1813), very narrow and limited acceptable occurrence of patent infringement for such experimentation of patentable tech that is used for personal research and explorative curiosity. Over the years, cases have attempted to use the doctrine as a defense for certain infringements, however as defined by court ruling, unless the infringement is “solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry” then it is indeed a form of patent infringement.
To date, the determination of what does and does not fall within the acceptable margin of infringement has been left to the discretion of the individual party. However, a new inquiry from the USPTO aims to determine whether the public wishes for legislative bodies to determine and approve the experimental use exception.
The Historical Origin of the Case
The experimental use defense to a claim of patent infringement was first introduced in the landmark historical case Whittemorev. Cutter of 1813. The Whittemore court approved the instruction to the jury that “the making of a machine fit for use, and with a design to use it for profit, was an infringement” of a patent right. In assessing this instruction, the court reasoned that “it could never have been the intention of the legislature to punish a man, who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.” Thus, the court looked to the prospect of profit-making to determine infringement.
Subsequent cases include:
Bonsack Machine v. Underwood, the court found that experimentation on a patented cigarette machine was not experimental use when the purpose of the experiment was to show superior properties of the defendant’s competing product.
In Roche Prod. v. Bolar Pharm. Co., the court found that “Bolar’s intended `experimental’ use is solely for business reasons and not for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.”
Embrex v. Service Engineering Corp., the court denied an experimental use defense because of the district court’s determination that the defendant performed tests “expressly for commercial purposes.”
Current Perspectives on the USPTO Experimental Use Doctrine
At present, the general conclusions remains that “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.” This “very narrow and strictly limited experimental use defense” remains the current state of experimental use exception jurisprudence in the United States.
Many argue that a narrow exception enhances innovation by rewarding innovators with robust patent rights, while others noted that restricting researcher access to patented technologies would impede innovation.
USPTO Inquiry
Regardless of the arguments, the USPTO is interested in collecting the public’s views on the impact of the experimental use exception in all technology areas. For example, one technology area for which greater clarity around the experimental use exception may be of interest is the agricultural industry. In March 2023, the U.S. Department of Agriculture (USDA) issued a report, prepared in consultation with the USPTO, on promoting fair competition and innovation in regards to seeds and other agricultural inputs. In that report, the USDA and the USPTO both committed to evaluating “new proposals for incentivizing and protecting innovation in the seed and agricultural-related space, including the addition of research or breeders’ exemptions for U.S. utility patents.” This work is consistent with the call in the President’s 2021 Executive Order on Promoting Competition in the American Economy. The views submitted in response to this notice will help in conducting this evaluation, as well as evaluating the impact of the experimental use exception in other technology areas.
Internationally, the handling of such exceptions varies wildly. European nations “loosely” govern the interpretation of exceptions, while Asian countries have more exemptions codified in law. As political and economic pressure continues to fluctuate, it will be interesting to see how the USPTO decides to govern exemptions, if at all.
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