Using Patents in Research
In the section ‘Intellectual Property’ there is a general description of patents along with the procedure required to obtain a patent. The owner of the patent (known as the Patentee) is awarded the right to prevent others from making, using, importing or selling the invention without permission.
This means that a person may only make use of a patented invention with the Patentee’s consent and any other use constitutes infringement. It is important to note that there is no blanket defence to infringement for Universities or others who use patented inventions to carry out research with the intention of publication or which otherwise might be regarded (by some) as being ‘non-commercial’.
Certain specified acts in the Patents Act do not constitute infringement. Such permitted acts include an act “done for experimental purposes relating to the subject matter of the patent” which the University may seek to rely in relation to some of its research activities.
This defence to infringement is designed as a matter of public policy to ensure that the patent monopoly should not be allowed to inhibit scientific development.
The scope of the defence depends upon the way the expressions ‘experimental purpose’ and ‘relating to subject matter of the patent’ are defined and interpreted.
From the case law available it would appear that an act done to discover something unknown or to test a hypothesis might be regarded as experimental. The example often given to illustrate the issue as to what type of acts are regarded as ‘relating to the subject matter of the patent’ (and so permitted) is that of the genetically modified ‘OncoMouse’. A person wishing to test a cure for cancer they have developed by applying it to a genetically modified mouse would not be able to rely on the defence since the test in question relates to the cure they have developed and not the genetically modified mouse. Other examples can be less clear cut.
If the defence was broader it would mean that a diagnostic kit could not be protected by patent law and research tools would have no value.
Interestingly there has been debate in recent years as to whether the research exemption should be broadened and this has occurred in some jurisdictions.
The position in the UK however is unchanged and only certain, quite narrow acts are permitted by law.
In practice, provided no commercial sales and/or services are supplied, perhaps few companies would litigate against a research organisation which is essentially carrying out academic research and development which entail the use of a company’s patents. But this is a risk and advice should be sought with a view to considering the obtaining of permission in appropriate cases.