Reprinted with permission from the June 2014 issue of Intellectual Property Today. Copyright 2014.
To decide whether patent law may limit academic freedom, consider three issues. First, whether the background rules of law provide protection for academics. Second, whether the areas covered by patents are of interest to them. And third, whether the entities that hold rights to patents may end up asserting those rights. The answers to those three questions suggest that the possibility of impact on academic pursuits exists.
For the first issue, it may be instructive to compare the background rules of patent law with those of copyright law, as the Supreme Court has said that the two bodies of law share an “historic kinship.” Sony Corporation v. Universal City Studios, 464 U.S. 417, 439 (1984). Despite that relationship, the two diverge when it comes to protection of academic uses of intellectual property. In copyright law, the doctrine of “fair use” can be a shield against attempts to create liability for academic use of copyrighted material. Indeed, one of the statutory factors in considering whether usage of copyrighted material is fair and should be exempted from liability is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). Courts have accordingly held that “[w]here the purpose of the use is for scholarship and research . . . the first factor ‘tilt[s] in the defendants’ favor.’” The Authors Guild, Inc. v. Hathitrust, 902 F. Supp. 2d 445, 459 (S.D.N.Y. 2012) (quoting NXIVM Corp. v. Ross Inst., 364 F.3d 471, 477 (2d Cir. 2004)). By no means does this immunize academics from liability under the copyright laws. For example, a professor cannot defend copying another academic’s copyrighted paper on the ground that it was not done for monetary gain. See Weismann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989). Nor could a copy shop justify making multiple copies of copyrighted materials on the grounds that they were to be used in the classroom. See Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (en banc). However, the fact that certain material was copied and used without consent to illustrate a point in the course of teaching a class might well be free of liability under the fair use doctrine.
Patent law, on the other hand, has no counterpart excusing the unauthorized academic use of intellectual property. Far from giving those engaged in academic pursuits special protection, the Federal Circuit’s ruling in Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002), makes clear that the scope of protection for usage of patented property in an experimental or academic fashion is slim. The Federal Circuit holds that the experimental use exception applies only if the use is nothing beyond a philosophical exploration: “so long as the act is in furtherance of the alleged infringer’s legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense.” Id. at 1363. Once the line between legitimate business and philosophical inquiry has been crossed, liability attaches to academic pursuits as well.
Although a professor could anticipate that work performed partly for research and partly for commercial purposes would go beyond the sort of philosophical inquiry contemplated by the experimental use exception, the Federal Circuit gives the experimental use exception an even narrower scope than might be expected. The Madey case held that research projects “with arguably no commercial application whatsoever” could still be outside the exception because such “projects unmistakably further the institution’s legitimate business objectives, including educating and enlightening students and faculty participating in these projects.” Id. They could also “increase the status of the institution and lure lucrative research grants, students and faculty.” Id. Thus, far from being like copyright where the use of copyrighted intellectual property for pedagogy is a plus factor suggesting the use would be fair, in patent law the fact that students may learn something from projects using patented intellectual property demonstrates that the patented property is being used in a commercial manner that advances the academic mission of the university.
The exposure of academic projects to liability under the patent laws is highlighted by a recent separate opinion in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir.) (en banc), cert. granted, 134 S. Ct. 734 (2013). There, Judge Newman argued that “patented information is not barred from further study and experimentation in order to understand and build upon the knowledge disclosed in the patent,” id. at 1321 (Newman, J., concurring in part, dissenting in part), although “the popular press has accepted the theory that experimentation is barred for patented subject matter.” Id. at 1324. She expressed her view that a patentee’s exclusivity “has traditionally been applied only against commercial practice,” while insisting that “until recently the principle [of allowing experimental use] was not in question.” Id. However, her proposal “that the court reaffirm the long-standing rule that study and experimentation are not infringement, whether the experimentation is for basic or applied purposes,” id. at 1322, was joined by no other judge on the Federal Circuit, suggesting that view of the rule does not command a majority of that court, and may have no other adherents at all.
Because patent law does not provide much, if any, special protection for academic endeavors, the second question in thinking about potential restrictions on academic freedom is whether patents cover what academics seek to do. The Supreme Court has made clear for decades that some basic building blocks of academic inquiry cannot be subject to patent rights. For example, it is well settled that “laws of nature” are not patentable. Therefore, today’s scientists need not worry that the theories of Sir Isaac Newton or Albert Einstein could be removed from their toolbox. See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1297 (2012) (“Einstein, we assume, could not have patented his famous law by claiming a process consisting simply of telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa).”). To be sure, patent law provides protection for a much shorter period of time than copyright, so even if certain rights were given to inventors, they would not be subject to a monopoly forever. But the laws of nature exception means that even if breakthrough theories aren’t so old and well-known that any attempt to patent them would be an impermissible attempt to claim what was found in the prior art, a new such law discovered just last week would still not be patentable.
But academic pursuits are built on more than just fundamental laws of nature: oftentimes research may require the use of more mundane (and potentially patented) technology. Though there have not been reports of widespread campaigns to get professors or students to pay for allegedly infringing upon patents purportedly covering, for example, 802.11 Wi-Fi technology, such standards are oftentimes targeted by patentees claiming to hold foundational patents covering devices that use them. See, e.g., Edward Wyatt,Obama Orders Regulators to Root Out ‘Patent Trolls’, N.Y. Times, June 4, 2013 (“One company threatened to sue 8,000 coffee shops, hotels and retailers because they had set up Wi-Fi networks for their customers.”); Ashby Jones, New York State Cracks Down on ‘Patent Trolls’, Wall St. J., Jan. 13, 2014 (noting that MPHJ Technology Investments LLC had sent letters to more than one thousand New York businesses accusing them of infringing patents allegedly covering the scanning and emailing of documents).
Additionally, in recent years material some regard useful to scientific inquiry in the biotechnology sphere has come under patent coverage. These include patents on genes and genetic materials, and processes for detecting diseases using such materials. The most widely publicized example of this may be the recent case involving Myriad Genetics where claims were made to the BRCA gene, and relatedly to the ability to test for that gene. Myriad had acquired the rights to patents on “isolated gene sequences and diagnostic methods of identifying mutations in these sequences.” Ass’n for Molecular Pathology v. USPTO, 689 F.3d 1303, 1310 (Fed. Cir. 2012),aff’d in part and rev’d in part sub nom. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013). Having correlated the occurrence of cancer with certain genetic sequences, the inventors were able “to provide BRCA diagnostic testing to women.” Id. at 1314. Other entities using such methods to provide clinical BRCA testing services were requested to cease and desist, and “accusations by Myriad that” the use of “BRCA testing services infringed its patents forced” other labs to stop providing those services. Id.
Myriad sought to enforce its patent rights against professors as well as purely commercial users. In letters advising academics accused of infringing the patents to cease and desist their activities, its attorneys said that the “cease-and-desist notification did not apply to research testing ‘for the purpose of furthering non-commercial research programs, the results of which are not provided to the patient and for which no money is received from the patient or the patient's insurance.’” Ass’n for Molecular Pathology,689 F.3d at 1315. However, this exclusion from a demand that a license be taken was a matter of choice on the part of Myriad rather than one of right on the part of the academic researcher, in light of the Madey ruling. It seems likely that performing ground-breaking research on genetics would qualify as the sort of activity viewed as enhancing the reputation of an academic institution, thus taking it out of any protection offered by an experimental use exception. So any exemption from liability based on academic usage may be due only to the grace of a patentee, who can always reconsider that decision. That does not provide a foundation for academic freedom going forward. Although the Federal Reporter does not appear to reflect a large number of lawsuits filed against universities and professors for alleged patent infringement, there is some indication in academic literature that the threat of such lawsuits may have an impact on decisions by laboratories, including academic laboratories, on whether to carry out certain tests. See, e.g., Merz et al., Diagnostic Testing Fails the Test, 415 Nature 577 (2002). And although the Supreme Court invalidated some claims of the Myriad patents on review, other patents of a similar nature may remain valid. So the answer to the second question, whether patents cover areas that may be of interest or use to academics, appears to be yes as well.
The final question to consider in deciding whether patents can impact academic freedom is whether patentees are likely to assert their patent rights. There may be no ready answer to that question, given that there do not appear to be a large number of reported cases where academics have been sued for patent infringement. However, the fact that there are not multiple well-known published opinions of that sort does not mean that such cases do not exist, nor does it say anything about whether actions short of filed litigation may affect decisions by academics. In the biotechnology area, which as noted above has had some prominence of late in the patent world, a recent paper suggests that collections of patents (ironically, patents held by major universities) could be of interest to entities that would like to monetize those patented technologies. See Robin Feldman & W. Nicholson Price II, Patent Trolling--Why Bio & Pharmaceuticals Are At Risk (2014). That is not to say that the monetization theorized by the authors would definitely occur, or that to the extent that it were to occur the targets for monetization would be academics as opposed to companies that might generate greater revenues from the use of the patented technology. But to the extent that patents are in the hands of those who may prefer to assert them, the risk of infringement litigation is increased. [Link]