Madey v. Duke University: Shattering the Myth of Universities' Experimental Use Defense

Abstract

the Federal Circuit rejected an experimental use defense to a patent infringement lawsuit against a university.The Federal Circuit considered for the first time the issue of whether a nonprofit research institution accused of patent infringement should be treated any differently from a commercial company.The court held that the experimental use defense does not apply to infringing activities that are "in keeping with the alleged infringer's legitimate business, regardless of commercial implications." 3By defining "legitimate business" broadly, the court practically eliminated the experimental use defense in academic research, causing outcries among universities and nonprofit research institutes who fear that the decision will significantly impede the nation's sci-4 entific progress, especially in the biomedical area.In reality, Madey has merely shattered a long-held myth that universities are immune to patent infringement liability under the experimental use defense.Given the Federal Circuit's hostility towards the experimental use defense in commercial settings, the Madey ruling is hardly a surprise. 5ure academic research devoid of commercial implications is becoming a rarity in an era of federal incentives to turn the fruits of governmentfunded basic research into commercial applications.*Moreover, despite their patent infringement activities, universities have not faced infringement liability. 7Patent holders have traditionally tolerated such infringement because the harm of a lawsuit against a university outweighs its