IP Law Daily, PATENT NEWS: USPTO seeks public feedback on state of experimental use exception, (Jun 28, 2024)
By Cheryl Beise, J.D.
The agency would like to know if this judicial exception for experimenting with patented subject matter should be codified.
The USPTO today published a request for comments seeking public feedback on the current state of the experimental use exception jurisprudence and whether legislative action should be considered to enact a statutory experimental use exception. Comments are due September 26, 2024. (89 Fed. Reg. 53963 (June 28, 2024)).
The Notice explains that the experimental use defense to a claim of patent infringement was first adopted in 1816 in the case of Whittemore v. Cutter 29 F. Cas. 1120 (C.C.D. Mass. 1813) (Case No. 17,600). Subsequent courts affirmed Whittemore's rationale, finding that experimentation is not a defense to infringement if it creates a benefit for the accused infringer. In Madey v. Duke University, 307 F.3d 1361 (Fed. Cir. 2002), the Federal Circuit emphasized the narrow nature of the exception. According to the Notice, a range of views on the scope of experimental use has developed since Madey.“Some argued 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,”the Notice states. The Notice notes that several nations have adopted a statutory experimental use exception for otherwise infringing uses.
The agency is interested in public views on the impact of the experimental use exception in all technology areas. The Notice is seeking responses to the following questions:
Please explain how the current state of U.S. experimental use exception jurisprudence impacts investment and/or research and development in any field of technology, including, but not limited to: (a) quantum computing; (b) artificial intelligence; (c) other computer-related inventions; (d) agriculture; (e) life sciences (including prescription drugs and medical devices); and (f) climate-mitigation technologies.
Do you believe there are any technologies that are negatively affected by the current state of experimental use exception jurisprudence in the United States? If yes, please identify which technologies and explain how you believe they are affected.
Please explain what impact, if any, a statutory experimental use exception would have on the innovation and commercialization of new technologies including with respect to: (a) research and development; (b) ability to obtain funding; (c) investment strategy; (d) licensing of patents and patent applications; (e) product development; (f) sales, including downstream and upstream sales; (g) competition; and (h) patent enforcement and litigation.
Has the current state of experimental use exception jurisprudence impacted decisions you have made with respect to filing, purchasing, licensing, selling, or maintaining patent applications and patents in the United States? If yes, please explain how.
Please explain whether you believe the United States should adopt a statutory experimental use exception. In doing so, please identify your reasons, including by providing evidence and data to support your views.
Please explain how a statutory experimental use exception, if any, should be defined. Please include specific limitations and restrictions you believe would be needed to ensure that patent rights are preserved.
Please identify public policy reasons in support of maintaining the status quo or changing the experimental use exception in the United States.
Please provide any additional recommendations on how best to enhance and facilitate experimental research on patented inventions in the United States.
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