The case of Madey v. Duke University has ruffled a number of feathers in the academic community, parts of which had tended to assume that it could own patents but need not worry about those of others because pure research is not commercial. The case arose out of two patents owned by Madey, who had been employed, but subsequently terminated, as a laboratory director at Duke University. The patents were obtained prior to his taking up an appointment at Duke. After his termination, he sued Duke for infringement of his patents. Duke defended on the grounds of government licenses and experimental use. So far as the former was concerned, the district court held that, to the extent that the patents were being used by Duke to fulfill government contracts, there could be no claim of patent infringement and that the only recourse was an action for compensation before the Court of Claims. On the experimental use issue, the District Court placed the burden on Madey to show that the University’s use did not meet the experimental use exception.

The Federal Circuit reversed on both issues. On the government license issue, it held that there was insufficient evidence before the court to conclude whether in the present case the work carried out under a government contract was “for the United States” as required by 28 USC 1498(a).

However, it is on the experimental use issue that the universities are most upset. Duke apparently argued that, as a non-profit educational establishment, its activities were inoculated against patent infringement as long as they were solely for research, academic or experimental purposes. The Federal Circuit disagreed and pointed out that, in Roche v. Bolar and other cases, it had held that, although an experimental use exception as crafted in the nineteenth century continued to exist, it was a very narrow one, for example, “to satisfy idle curiosity or for strictly philosophical enquiry.” The court went on to state:


The court noted that even projects undertaken without direct commercial application often “unmistakenly further the institute’s legitimate business interests...These projects also serve for example to increase the status of the institution and lure lucrative research grants, students and faculty.”