The Research Exemption to Patent Infringement: The Delicate Balance Between Current and Future Technical Progress
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Description
Patents are intended to provide incentives to invest in research and development, but they can also make it more difficult to build on the inventions of others either because an improved invention falls within the claims of a prior patent or, as is the focus of this chapter, because the research and development process for a new invention requires the practice of a prior patent. In such cases, prior patentees may be unwilling to license the research use of their inventions on reasonable terms to potential competitors. A research exemption from infringement liability might be used to skirt such prior patentee reluctance, but such an exemption raises the possibility that depriving patentees of control over the research uses of their inventions might diminish incentives to invest in developing them. This chapter reviews current United States law regarding research exemptions and explores proposals for broader research exemptions. The research exemption come in two “flavors”—a statutory exemption for research “reasonably related” to regulatory approval by the Food and Drug Administration and a traditional exemption for noncommercial research based on judicial interpretation of the scope of infringing “use.” The statutory exemption was the subject of a 2005 decision by the United States Supreme Court, while concern about judicial narrowing of the traditional exemption has been reflected in two major national reports and numerous scholarly articles. An important controversy exists as to whether either exemptions should be applied differently depending upon whether the research is aimed at understanding or improving upon the patented invention or uses the patented invention as a research tool. This chapter summarizes arguments in favor of a categorical exemption for “experimenting on” a patented invention. It then addresses the more difficult issue of an exemption for research tool use. Finally, this chapter briefly considers the impact on the research exemption issue of paying more attention to motivations for innovation—in particular the motive of “user innovators”—that do not stem from a desire for commercial compensation.
Source Publication
Intellectual Property and Information Wealth: Issues and Practices in the Digital Age
Source Editors/Authors
Peter K. Yu
Publication Date
2007
Volume Number
2: Patents and Trade Secrets
Recommended Citation
Strandburg, Katherine J., "The Research Exemption to Patent Infringement: The Delicate Balance Between Current and Future Technical Progress" (2007). Faculty Chapters. 1681.
https://gretchen.law.nyu.edu/fac-chapt/1681
