Experimental use exception

Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002)

The Court of Appeals for the Federal Circuit interpreted the US experimental use exception in a very restrictive way. Regardless of whether a particular institution or entity is engaged in an endeavour for commercial gain, so long as the act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the experimental use defense.

Case Summary

CoreValve Inc v Edwards Lifesciences AG & Anor. EWHC 6 (Pat) (2009) (In the High Court of Justice, Patent Court, London)

It was held that the mere fact that the purpose of a use is commercial is no rebuttal of the statutory defence of experimental use. A more complete consideration of the defence requires consideration whether the immediate purpose of the transaction in question is to generate revenue. There is a need to consider the defendant's preponderant purposes.

Case Summary

Canada-Patent Protection of Pharmaceutical Products, Report of the Panel, WTO, WT/DS114/R (2000)

A WTO dispute settlement panel ruled that:

(1) Regulatory review exception – that permits competitors to use a patented invention, without the authorization of the patent holder, for the purposes of obtaining marketing approval – is consistent with the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS);

Case Summary

Roche Products Inc. v. Bolar Pharmaceutical Co., 733 F.2d 858 (Fed. Cir. 04/23/1984)

The Court of Appeals for the Federal Circuit (CAFC) ruled that the experimental use exception in US patent law is truly narrow. Where the subject matter of a patent is made or used as an experiment, whether for the gratification of scientific tastes, or for curiosity, or for amusement, the interests of the patentee are not antagonized, the sole effect being of an intellectual character in the promotion of the employer's knowledge or the relaxation afforded to his mind.

Case Summary