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Topic: possible infringement because of dissertation (Read 695 times) |
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SylverMoon
Newbie
Posts: 1
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possible infringement because of dissertation
« on: Sep 10th, 2004, 11:35am » |
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Hi Everyone,
Here's my situation:
I am a PhD student in Education in New York City. Somebody has patented a methodology for solving math problems with game pieces. I am interested in doing dissertation research comparing their methodology with one that I created that mirrors theirs (except it's on a computer and not involving physical game pieces.) I am interested in doing this for educational/research purposes, but I received a not-so-cordial letter from the company stating that they do not give me permission for me to continue my research. (I never asked permission from them in the first place, I had only mentioned that I was creating my own version on the computer for research purposes.) My questions are:
1. Even though it's for research/dissertation work, do they have the authority to tell me not to pursue my research because of the patent?
2. If it is possible for me to continue to do my research, would I be in trouble if I published it?
Any and all help would be appreciated.
Thanks,
SylverMoon
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Isaac
Senior Member
Posts: 3472
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Re: possible infringement because of dissertation
« Reply #1 on: Sep 10th, 2004, 4:50pm » |
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You've asked about a fairly contentious issue of patent law.
In some countries there is a "research exception" that would
allow a university to pursue academic research where that
activity would otherwise infringe a patent. In a 2002 case
(Madey vs. Duke) the CAFC held that any research exception would apply
only in very narrow circumstances. Activities that tended to enhance the
reputation of the school, attract new students, etc. would
probably not be covered under the exception. Only idle,
philosophical pursuits not related to the school's business
interest stand a chance of being an exception to infringement.
As a PhD candidate, I think your activities might be treated the same way, and you probably would not have the benefit of the immunity enjoyed by a state university.
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| « Last Edit: Sep 10th, 2004, 9:25pm by Isaac » |
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Isaac
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eric stasik
Full Member
director, patent08
 
Posts: 391
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Re: possible infringement because of dissertation
« Reply #2 on: Sep 11th, 2004, 2:02am » |
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Dear SylverMoon,
Mr. Clark gave you a good answer. It seemed a little vague to me, so I did some quick research:
"The judicially created experimental use exemption (considered both an exception and defense to patent infringement) is a limitation on a patent holder’s exclusive rights. The experimental use exemption arose out of dicta in which Justice Joseph Story, a leading intellectual property judge in the early years of American patent litigation, held a defendant not liable for patent infringement. In explaining his decision, Justice Story stated Congress did not intend for the law to punish someone who made or used a patented invention out of curiosity, or for mere amusement. In subsequent cases, the experimental use exemption was modified to include patent infringers who have no profit motive for infringing the patent. This exemption was further modified to expressly exclude patent infringers whose infringing activities are within the infringer’s line of business. While the Federal Circuit has repeatedly deemed the experimental use exemption “truly narrow,” not until recently did the court deny this defense in a lawsuit of patent infringement committed by a university."
....
While the Federal Circuit has maintained a “truly narrow” experimental use exemption, this narrow exemption is no longer practical. Both academic and industrial scientists admit access to patented inventions does not usually come easy. Furthermore, the Bayh-Dole Act allowed academic institutions to pursue patent protection for federally funded research. This has dramatically increased the overall number of patents pursued, as well as complicated the academic claim to an experimental use exemption."
http://www.jmls.edu/ripl/vol3/issue1/haindfield-middle.html
So there you have it.
Sylvermoon it is usually considered an infringement to make, use, or sell a patented invention without the permission of the patent holder. Publishing your paper would probably not be an infringement, although programming your computer to produce the published results may be. It depends on what the claims of the patent say.
Certainly your university has a patent attorney with whom you can discuss the specific details of your case. We can only discuss general concepts in this public forum.
If you have received an unfriendly letter from the patent holder, you would be foolish to proceed any further without obtaining some competent legal advice based on the specifics of your situation.
Regards,
eric stasik
Regards,
eric stasik
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eric stasik
director
http://www.patent08.com
patent08
patent engineering,
business development,
and licensing services
postbox 24203
104 51 stockholm
sweden
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: possible infringement because of dissertation
« Reply #3 on: Sep 14th, 2004, 9:40am » |
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Wow! You've gotten some very thorough answers! I'll just toss in one more variable that may come into play.
You didn't mention whether your university is a state university, but there's the issue of state sovereignty. It comes down to some fairly obscure interpretation of the Constitution, but the Supreme Court has determined that Congress had no authority to include the states themselves in laws against patent infringement. So, states are currently immune from patent infringement liability unless they expressly waive such immunity.
I don't know how tightly coupled the university must be with the state or whether NY has explicitly waived its immunity, but it's an issue worth exploring.
Good luck!
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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Richard Tanzer
Guest
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Re: possible infringement because of dissertation
« Reply #4 on: Sep 14th, 2004, 12:21pm » |
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What is the patent number?
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