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A patent gives the holder right to prevent others from using it for commercial purposes. Can he prevent others from using it for research purposes? Answer it for US, Europe and India, if answer depends on the jurisdiction.

  • @EricShain Please stop answering questions in comments. Comments do not have the features needed to vet or edit anything you say here, which defeats the purpose of using this type of collaborative Q&A. If you have a proper answer, please post it below. Thank you. – Robert Cartaino Nov 18 '17 at 15:42
  • @maca care to answer this useful question? I don’t feel qualified. – Eric Shain Nov 18 '17 at 16:17
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Regarding the U.S. only. There is a very specific carve out for generic pharmaceuticals in the process of approval, but no, there is not a general research exemption in the U.S.. Copyright has a "fair use" doctrine, patents do not. The last time the CAFC took this on they said it might be ok -

“solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry,” and that the defense does not apply if the use is “in furtherance of the alleged infringer’s legitimate business.” This is true regardless of the “profit or nonprofit” status of the user and “regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain"

from SEALING THE COFFIN ON THE EXPERIMENTAL USE EXCEPTION

  • Not exactly "research", but there is also, under US law, an exemption for enforcement against infringing use of a patented medical or surgical procedure in a "medical activity", not including patented devices or compositions. 35 USC § 287(c). – Upnorth Nov 27 '17 at 22:18
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In europe, infringement is dealt with in national patent law (and afaik the EPC doesn't have any provisions on that matter).

I can't answer for all EU states therefore, but at least for the UK and Germany from this presentation.

UK:

The Research Exemption in the United Kingdom

• Statutory exemption – Section 60(5)(b) of the Patents Act 1977 An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if – (b) it is done for experimental purposes relating to the subject matter of the invention

• Limited case law – Leading authority – See Monsanto v. Stauffer RPC [1985] 515 –

Useful – See decisions of the German Federal Supreme Court ‐ Clinical Trials I and II

Germany:

Section 11 No.2 German Patent Act “ Experimental use privilege ”

• Section 11 No.2PatG – The rights conferred by the Patent shall not extend to acts done for experimental purposes relating to the subject matter of the patented invention.

– Experimental use is exempted from patent protection. –

Prerequisites:

• acts done for experimental purposes

– “ any systematic procedure aimed at obtaining new information is considered an experiment ” ( BGH “ Clinical Trials I ” ) considered an experiment ( BGH , Clinical Trials I)

• they must relate to the subject matter of the patented invention – i.e., to the “technical teaching and its beneficial utilization ” (BGH, “Clinical Trials I”)

As an explanation for the last point, the use has to relate to the subject matter of the invention means, you can try to find a better way of using an invention, but you can not use a patented microscope (without license) to do research on biology, because it has nothing to do with the microscope.

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