| Renting Space on the Shoulders of Giants: Madey and the Future of the Experimental Use Doctrine |
| Tom Saunders [View as PDF] |
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113 Yale L.J. 261 (2003) The experimental use doctrine in patent law protects alleged infringers who use patented inventions solely for experimental purposes, such as testing whether a device functions as claimed or re-creating a process to observe its effects from a scientific perspective. The judicially created exception traces its lineage back nearly two hundred years. Although the exception has always been construed narrowly, it grew narrower still in October 2002 when the Federal Circuit issued its opinion in Madey v. Duke University. Madey reformulated the experimental use doctrine and cast considerable doubt on its continued viability as a defense in patent infringement cases involving universities. As a result, university researchers accustomed to standing on the shoulders of giants by studying patented technologies freely may now be forced to rent space on those shoulders instead. This Comment argues that the Madey court erred when it characterized university research as driven by a business interest in competing for prestige, students, and research grants. Not only does this view oversimplify experimental use defense by causing it to turn on the status of the defendant rather than the nature of the contested use, but it also undermines the balance between innovation and access that lies at the heart of the Patent Act. The Federal Circuit should have instead crafted a more nuanced experimental use exception that protects educational experimentation on patented inventions. Such a rule might not help Duke in its dispute with Professor Madey, especially if the record on remand confirms that Duke was experimenting with rather than experimenting on Madey's invention, but it would allow future researchers to continue testing and teaching about patented inventions without fear of being sued. |