Is the Experimental Use Exemption for Patent Infringement Still Needed?, 3 J. Marshall Rev. Intell. Prop. L. 103 (2003)

The judicially created experimental use exemption has traditionally been a limitation on a patent holder’s rights because it allows patent infringing activities involving research for mere curiosity or amusement. This exemption was later modified to further protect any research performed by institutions not having a profit motive for the patent infringement, resulting in many institutions freely infringing patented inventions, knowing that broad protection was available under the experimental use exemption. However, in 2002 the Federal Circuit effectively ended the experimental use exemption as a defense for academic institutions, by recognizing that academic institutions can be held liable for infringement for using a patented technology in the course of its own research. Rather than limiting access to these inventions in order to protect patent holders’ rights, Congress should impose a compulsory licensing scheme for research tools, which also awards a reasonable royalty to the patent holder for the use of the patented research tool. Mandating compulsory licensing allows access to research tools necessary for progress in science and technology while protecting the patent holder’s rights in the patented research tool