A Comparative Review of New Developments
New Directions in Patent Law series
Edited by Emanuela Arezzo and Gustavo Ghidini
Chapter 4: The Experimental Use of the Patented Invention: A Free Use or an Infringing Use?
Vincenzo Di Cataldo THE TRADITIONAL LAW: AN EXEMPTION RULE FOR ‘PURELY’ EXPERIMENTAL ACTIVITIES Is a researcher free to use in his/her research activities an invention covered by another inventor’s patent? Almost all the patent systems of the world state that anyone is free to ‘play’ with other people’s patented inventions, provided that it is a purely experimental use. The spirit of this rule is what induces me to use the verb ‘to play’, meaning a research activity absolutely devoid of industrial or commercial purposes. On the contrary, if the player intends to commercialize the possible fruits of the research, the use of the patented invention is generally deemed to be an infringement of the patent. The exemption for research activities is quite an old rule. In the United States, it dates back to 1813, having been affirmed in Whittemore v. Cutter.1 The opinion, written by Justice Story, justifies the reversal of the infringement suit against a ‘pure’ researcher, noting that ‘it could never have been the intention of the legislature to punish a man, who constructed a machine [covered by third people’s patent] merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects’.2 As has been said many times, such an experimental activity can in no way harm the patent holder’s economic interests. And US courts still adhere to this principle, although it has never been expressly stated in patent law. Article 27(b) of the Luxembourg Convention on the...
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