Academic researchers world-wide need to get up to speed with ongoing changes to patent legislation or face potentially grave financial consequences.
Academic researchers world-wide need to get up to speed with ongoing changes to patent legislation or face potentially grave financial consequences, warns US patent expert Kathleen Williams at Boston-based lawyers Palmer & Dodge.
One recent case in particular, Madey v. Duke, has ’huge ramifications’ for the academe-industry relationship, says Williams. The case concerns physics professor John Madey and his former employer Duke University. Madey developed a free electron laser while at Duke, which he asked the university to patent. Duke duly did, but made the ’big mistake’ of granting Madey ownership rather than simply handing it over in the form of a licence, says Williams. Madey subsequently left Duke for a post at Hawaii University, from where he sued Duke for continuing to use the laser he had developed.
’The case went up through the district courts, the penal courts to the supreme court,’ recalls Williams. ’In all cases the ruling was that Duke did have to pay royalties.’
The larger issue, she says, is what this means for university research. Until this case, many universities engaged in not-for-profit research assumed they fell under the so-called ’experimental use exemption.’ But this turns out to be ’very, very narrow,’ says Williams. ’It’s still hard to verbalise what experimental use applies to,’ she said.
What the court said in its Madey v. Duke ruling ’is just astounding’, said Williams, who will chair a session on patent issues at Bio2004 (San Francisco, 6-9 June). According to the ruling, Duke was operating a business-like entity not only as a result of the patents it was filing - and Williams concedes that point - but also as a result of acquiring ’lucrative research grants’, which she finds shocking.
The question now is how the issue should be addressed. The recent release of a national research council report recommending a variety of changes to the US patent law for academic research makes a start, she says. ’It’s a US government effort to suggest more openness and flexibility in interpreting patent law,’ she told Chemistry World. ’It’s a reaction to the Madey v. Duke case and what it says is that there should be a legislative approach that should extend authorisation and consent to those conducting federally-funded research, and thus shield them from infringement liability.’ So there is some ground level effort, she says, although nothing has yet reached the stage of having anything before congress.
She views the session she is due to chair as an ’educational effort’. Time and again she is faced with ’surprise and shock’ from the researchers she meets. ’That tells me that people are not really aware of this yet,’ said Williams.