Survey of Universities: Effects of Madey v Duke Decision on the Research Exemption

The 2002 Federal Circuit Court of Appeals ruling in Madey v. Duke held that the experimental use defense against a claim of patent infringement is “very narrow and strictly limited” and does not apply per se to university research.  Until this decision, it had been widely accepted that an experimental use exemption existed for purely scientific research to study and understand a patented invention, including its limited use to make new innovations that may or may not be outside the scope of the original patent.  Concerns arose that the decision could have an impact on university research, either through a chilling effect through fear of infringement or increased costs on the part of universities to conduct patent searches and acquire licenses to patented technologies to undertake a project.

To assess the impact of that ruling on the conduct of university research, the Association of American Universities (AAU), the Association of American Medical Colleges (AAMA), the Council on Governmental Relations (COGR), and the National Association of State Universities and Land-Grant Colleges (NASULGC) organized a workshop in the fall of 2003, which convened university officials involved in developing and administering institutional policies governing university research and intellectual property.   

Workshop participants agreed that additional data would be needed to fully assess the impact of the Madey v. Duke decision.  Accordingly, the workshop sponsoring organizations, working with SIPPI, prepared a survey designed to provide information to the membership of AAU, COGR, AAMC, and NASULGC about challenges to universities’ research use of patented technologies.