navigating the patent maze

Scientists and lawyers can sometimes use the same words but mean different things.  "Experimental use" is one such term.  Scientists often refer to the use of an invention  - patented or not - in performing an experiment as "experimental use".   In patent law, "experimental use" of a patented invention is an exception to the rights of the patent owner. 

The rights granted to the patent owner are to exclude others from making, using, selling or offering to sell the invention.  These rights can be circumscribed by exceptions that the granting country enumerates.  For example, in the United States some of the specific exceptions are for uses reasonably related to submission of data to the FDA (Food and Drug Administration) and for practice of patented medical or surgical procedures by medical professionals.  Note the lack of a general exception for "experimental use". 

In countries that have exceptions for experimental use, the use is generally for experimenting on the invention.  Rarely is an exception given for using the invention as intended.  A model law allowing experimental use may include exceptions for:

• determining how the invention works;
• determining the scope of the invention;
• seeking an improvement to the invention.

Thus, under an experimental use exception, a scientist may be testing different additives in PCR to find one that markedly improves amplification.  In that case, the scientist is experimenting on the invention, not using it in her experiments.  Whereas, using PCR to assay for presence of a gene sequence would be an experimental use of PCR and not an excepted use under this model.

Photograph of Barbara McClintock using a microscope from National Library of Medicine Profiles in Science website. 

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