The Experimental Use Exception to Patent Infringement: Do Universities Deserve Special Treatment?
The experimental use exception has recently come under attack by many who consider it too narrow. Much of this discontent with the doctrine has been spurred by a relatively recent Federal Circuit opinion, Madey v. Duke University, which makes clear that a research university does not receive immunity under the experimental use exception when its researchers engage in research or conduct experiments using patented inventions. To determine whether such a narrowing is proper, one must consider the overarching theoretical question about the tradeoff between protecting patentees' rights and maintaining incentives to innovate. In the context of the experimental use exception, this Article posits that a narrow experimental use exception strengthens incentives to invent and innovate, while a broad experimental use exception would provide disincentives to invest in patenting and innovation. This is especially so given the nature of modern university research and existing patent-licensing practices. Part I of this Article provides background on the experimental use exception. Part II discusses the Bayh-Dole Act, its alteration of the landscape of university research, and its impact on university patenting activity. Part III explains why, in reality, university research will survive a narrow experimental use exception. Finally, Part IV discusses why the experimental use exception is appropriately narrow and proposes a test that ought to guide Congress in deciding when legislative broadening is necessary.