The Electronic Frontier Foundation (EFF), along with consumer advocacy groups Public Knowledge, and the Consumer Project, filed an amicus brief in the Merck v. Integra case asking the Supreme Court to protect scientific researchers from patent infringement.

Merck v. Integra, as we posted earlier here, deals specifically with information researchers submitted to the Food and Drug Administration regarding a potential cure for cancer. The EFF believes it raises broader questions about whether patent owners can stop academic researchers and inventors from studying patented inventions in order to research or improve upon them.

In their amicus brief, EFF argued that patent law allows researchers the freedom to make and use patented products for the purpose of furthering academic study. They also argued that experimentation on patented items for the purpose of creating new inventions is also allowed as long the patented products aren’t sold by the researchers.

See the amicus brief here.

EFF is going to have a tough, uphill battle on this one. I think US patent law has long been misinterpreted to suggest that one may pursue research involving a patented process or machine free from the threat of liability under the doctrine of experimental purposes. However, under this doctrine, a party who practices a patented invention escapes liable for infringement only if the infringement is performed solely for intellectual purposes, and without any intent or effort to commercialize the invention . Thus, research that is conducted with an eye toward patenting, licensing and exploiting the products of the research would most likely create liability under the patent laws.

The Court of Appeals for the Federal Circuit (“CAFC”) has construed both the experimental use and de minimis exceptions quite narrowly. See Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 863, 221 USPQ 937, 940 (Fed. Cir. 1984). The court held that courts should not “construe the experimental use rule so broadly as to allow a violation of the patent laws in the guise of ‘scientific inquiry,’ when that inquiry has definite, cognizable, and not insubstantial commercial purposes.”

The CAFC has acknowledged a narrow defense to infringement performed “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.” However, for any use by a commercial entity, it would be difficult to show that anything it does did not have at least some commercial purpose.

For more on Merck v. Integra, see Dennis Crouch’s Patently Obvious blog for an outstanding review of the case and the flood of amicus briefs pouring into the Supreme Court.

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