Cataldo, Vincenzo Di --- "The Experimental Use of the Patented Invention: A Free Use or an Infringing Use?" [2011] ELECD 974; in Arezzo, Emanuela; Ghidini, Gustavo (eds), "Biotechnology and Software Patent Law" (Edward Elgar Publishing, 2011)

Book Title: Biotechnology and Software Patent Law

Editor(s): Arezzo, Emanuela; Ghidini, Gustavo

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781849800402

Section: Chapter 4

Section Title: The Experimental Use of the Patented Invention: A Free Use or an Infringing Use?

Author(s): Cataldo, Vincenzo Di

Number of pages: 14

Extract:

4. The experimental use of the
patented invention: a free use or an
infringing use?
Vincenzo Di Cataldo

THE TRADITIONAL LAW: AN EXEMPTION RULE
FOR `PURELY' EXPERIMENTAL ACTIVITIES

Is a researcher free to use in his/her research activities an invention covered
by another inventor's patent?
Almost all the patent systems of the world state that anyone is free to
`play' with other people's patented inventions, provided that it is a purely
experimental use. The spirit of this rule is what induces me to use the verb
`to play', meaning a research activity absolutely devoid of industrial or
commercial purposes. On the contrary, if the player intends to commer-
cialize the possible fruits of the research, the use of the patented invention
is generally deemed to be an infringement of the patent.
The exemption for research activities is quite an old rule. In the United
States, it dates back to 1813, having been affirmed in Whittemore v.
Cutter.1 The opinion, written by Justice Story, justifies the reversal of
the infringement suit against a `pure' researcher, noting that `it could
never have been the intention of the legislature to punish a man, who
constructed a machine [covered by third people's patent] merely for
philosophical experiments, or for the purpose of ascertaining the suffi-
ciency of the machine to produce its described effects'.2 As has been said
many times, such an experimental activity can in no way harm the patent
holder's economic interests. And US courts ...