Patent Question Goes Before Court

January 31, 2003

A long-running dispute between Duke and a former professor has unexpectedly emerged as a legal test case that could affect the practice of scientific research at universities nationwide.

Duke officials have petitioned the U.S. Supreme Court to review an October federal court decision that substantially narrowed the ability of academic scientists to use patented technology for limited purposes in basic research. The ruling has attracted concern from national research organizations and universities that fear it could hinder researchers who study everything from environmental processes to the mysteries of human cells.

The case centers on John Madey, a physicist who moved to Duke from Stanford University in 1988. Duke built an addition to its physics building to house the innovative free-electron laser that Madey helped to pioneer. The device, which can be tuned to different frequencies, gives researchers a new view of research opportunities in areas ranging from physics to brain surgery.

Nearly a decade later, following a series of disagreements, Duke removed Madey as head of its free-electron laser lab. He resigned soon thereafter and took a position at the University of Hawaii, Manoa. The Mark III laser he brought from Stanford, however, remained at Duke, which said it was essential to its federal research obligations. Madey sued, demanding return of the equipment and charging Duke with infringing on two of his patents. A lower court sided with Duke, saying the university was legitimately using the devices for "experimental, nonprofit purposes only."

In its October ruling, the federal appeals court disagreed, although it focused on broad patent questions rather than the dispute over the equipment, which continues to be used at Duke. The appeals court said universities must apply the "experimental use" doctrine narrowly since universities, like profit-making businesses, may profit from technology patented by others. It noted that research helps Duke enhance its reputation, win grants, and benefit in other ways.

In their petition for writ of certiorari from the Supreme Court, Duke's attorneys argue that the Federal Circuit's decision "uncautiously disrupts both the delicate patent law balance embraced by Congress and the settled expectations of the inventing community." They said the decision "will have dire consequences for non-profit research institutions and for the future health of our nation," if allowed to stand.

Word of the decision, which remains as the law of the land unless the Supreme Court decides to review it, has been spreading since October. Critics say it fails to note the special role of academic research and education and warn it could force researchers to conduct endless patent searches and make licensing agreements for numerous technologies now used widely at Duke and other universities.

" Since the early 1800s, it has been generally accepted that academic research enjoyed an 'experimental use exception' under U.S. patent law," says David Korn of the Association of American Medical Colleges, one of several groups raising concern. "This understanding guides the behavior of academic researchers and has become ever more important as our patent system has progressively expanded the boundaries of 'patentable subject matter' ever further upstream in the pathway of scientific discovery and development. This encompasses now-commonly-used research tools and even quanta of fundamental scientific information such as human genetic mutations.

" The Madey decision, if not reversed, will require universities to create a thicket of new and expensive rules, procedures, and bureaucracy that will not only hinder but impair the conduct of academic basic science research, and result in the transfer of federally awarded research dollars into a bottomless pit of administrative and legal expense."

In its petition to the Supreme Court, Duke said it is of "great national importance" for the case to be overturned. "The importance to our society of scientific research conducted at universities and other non-profit research institutions is incalculable," the petition argues. "Many of the building blocks to this research, however, are patented. The Federal Circuit's decision threatens to delay or stymie research based on such patented inventions."

Duke officials are watching the case closely. "The effects of this ruling, were it to stand, have the potential to substantially complicate, and thereby impede, research throughout the university," says Provost Peter Lange. "A scientist's ability to respond spontaneously to insights during the research process promotes true exploration and discovery. This process, and university research generally, has proven to be one of the greatest, and least costly, sources of innovations that promote economic growth and technological leadership."

" My major concern," says R. Sanders Williams M.D. '74, dean of the medical school, "is that scientific creativity would be stifled if investigators are required to conduct patent searches every time they launch a new line of experimentation."

The high court is expected to decide by April whether to take the case, which would likely be heard in the fall or beyond. Congress could also choose to address the issue legislatively.