Legal battle threatens universities' use of patented technologies
Tinker Ready
Boston
Duke University researchers have been asked to review their use of patented research technologies and use alternative approaches wherever possible. An ongoing legal battle between the university and a former researcher could trigger similar reviews at other institutions.
For more than 100 years, US scientists have used proprietary reagents, devices and techniques under an 'experimental exemption' to patent laws. But this summer, the US Supreme Court declined to review a lower court decision in Madey vs. Duke, which challenged the university's use of former faculty member John M.J. Madey's free-electron laser. As a result, it is questionable whether the exemption will protect scientists against patent infringement liability.
Following the Supreme Court decision, Duke Medical Center Dean R. Sanders Williams sent a memo to researchers advising them to purchase reagents, devices and kits from commercial suppliers who have acquired the appropriate licenses. The memo was meant to inform researchers how the ongoing legal battle may affect them, Williams says.
"At this point, we have not used central authority to mandate any sweeping changes," says Williams. "We have not asked them to undo any experimental programs that are in progress."
Outside Duke, most universities are taking a wait-and-see approach as the case continues to move through the courts, but some are extremely worried about liability, says Peter Ludwig, a New York City patent lawyer who has been following the case.
"I can't help but come away with the deer-in-the-headlights analogy," says Ludwig. "This hit them like a ton of bricks. It's a difficult problem to wrestle with and they don't know which way to go."
Others say the ruling came as no surprise.
"From everything I had ever read on the 'research exemption', that exemption was very, very narrow—and we never relied on it," says Lita Nelson, director of the Massachusetts Institute of Technology's technology licensing office. "The ruling did not change our understanding of the law."
Ludwig says it's possible industry will back away from the legal battles and the bad blood that would come with demanding licensing fees from universities.
"Maybe it will just blow over and go away," he says. "[But] I think it's only a question of time before someone is going to make a claim against an institution and say, 'You've been using our technology and we want you to pay us'."
