1. Creating a Research Use Exemption that Better Fulfills the Patent Bargain Katherine J. Strandburg DePaul University College of Law (2004 Wisconsin L. Rev.)

2. The Shrinking US Experimental Use Exemption Pecuniary interests of the patentee Commercial v. Non-Commercial Nature of the Use But... unstable because Financial motives of infringer (commercial v. non) Financial impact on patentee (incentives to invent) DOOMED TO SHRINK – Legitimate business of the infringer

3. Experimenting on v. Experimenting with Distinction seems to be gaining support Comports with emphasis on disclosure -- use of inventive idea during patent term Separate recouping appropriable investment from control over follow-on innovation

4. Experimenting On Does it undermine incentives to invent? KEY THEORETICAL IDEA: Self-disclosing v. Non-self-disclosing Inventions

5. Experimenting On Incentive to Invent: –Free rider theory –Assumes inventive idea appropriable upon commercialization –Trade secrecy not possible Applies to self-disclosing inventions only! Incentive to Disclose: –Assumes inventive idea not disclosed by commercialization –Trade secrecy possible, patent quid pro quo Applies to non-self-disclosing inventions only!

6. Experimenting On Self-disclosing inventions –Patent system provides reimbursement of investment –Increased disclosure requirements have little effect Non-self-disclosing inventions –Disclosure is primary public payoff –Reimbursement for invention not necessary –Increased disclosure requirements have large effect Experimenting on - inherently differentiates between these two types of inventions - does not have large impact on incentive to invent

7. Experimenting On = increased disclosure requirement Should be permitted Self-disclosing/non-self-disclosing distinction is self-executing

8. Experimenting On v. Experimenting With Proposed test: Could the use be replaced by more information about the invention? YES: Experimenting On NO: Experimenting With

9. What about Experimenting With (Research Tools)? Trickier because cannot separate use of invention and use of inventive idea Research use has: direct impact on patentees market for invention AND direct impact on follow-on innovation

10. When Should We Worry? Only if tool patentee uses exclusivity to slow down publicly beneficial research by: - not commercializing - not licensing to the best researchers Only slows down research if: No close substitutes for tool No close substitutes for research problem

11. When Might This Happen? Tail Wagging the Dog? Easy research tools, difficult research - Tool inventor competence - Tool inventor resources - Misaligned incentives: Reputational incentives Larger share of smaller pie

12. Can We Distinguish... Easy tools, Hard research (tool patent may be a problem) v. Hard tools, Easy research (tool patent not a problem) Inventor control of follow-on innovation (may be a problem) v. Inventor recovery of investment (purpose of patent)

13. Proposal Separate exclusivity term from investment recovery term Two-tier patent term 3-4 years complete exclusivity followed by compulsory licensing Gives tool inventor chance to demonstrate: hard tool/easy research competence intent to promote rapid research

14. Thoughts on TRIPS Article 27: OK? Article 30: limited? not unreasonable conflict with normal exploitation? not unreasonably prejudice legitimate interests (patent holder and third parties) Article 31: Could work if procedure designed appropriately

16. Figure 1 T Invention No Invention Fig. 1 R

17. Figure 2 No Invention Invention R T P No Invention P R T

18. Figure 3 Invention w/Patent Invention w/ or w/o Patent R T P Self-Disclosing Non-Self-Disclosing R T P

19. Figure 4 Self-Disclosing Patent R T P Non-Self-Disclosing Trade Secret Non-Self-Disclosing Trade Secret or Patent

20. Figure 5 R P T IIIIII I

21. Figure 6 S IRIR I 3R =I c I 3P I 3S AB C D