USPTO seeks public feedback on the current state of the experimental use exception to patent infringement

At its core, the patent system aims to promote scientific, technological, and social progress; a goal advanced by both patent owners’ disclosure and publication of scientific and technical knowledge in patent documents and by the grant of robust and reliable patents that incentivize innovation and protect investment. This cycle spurs further research and development, as well as the dissemination of patented technologies that benefit society at large. The U.S. Patent and Trademark Office (USPTO) continues to strengthen our processes and procedures to help ensure that patent rights are as robust and reliable as possible, including through our work on the clarity of the record as well as our inter-agency and international work advocating for a strong patent and IP ecosystem. 

A key aspect of this work is ensuring patents serve their intended purpose to attract funds, get ideas to market, and hold liable those who infringe on (or use) someone else’s patent rights.  However, well-defined exemptions to patent infringement for activities that solely constitute bona fide experimental uses, often in the context of research and development, can help preserve and amplify the function of the patent system, including for newcomers to the market and small to medium-sized entities.

Courts have carved out a narrow exception for experimenting with patented subject matter, known colloquially as the “experimental use exception.” Over the years, U.S. jurisprudence has sought to define the contours of this limited exception to patent infringement. 

The USPTO has published a Request for Comments in the Federal Register seeking public feedback on the current state of the experimental use exception jurisprudence and whether legislative action should be considered to enact a statutory experimental use exception. 

“Maintaining the United States as a global leader in innovation is critical for driving economic growth and job creation,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Clarifying the contours of the USPTO’s experimental use exception, especially in view of researchers’ needs today, will help us continue to address emerging challenges and unlock new opportunities in key technology sectors. This RFC will help the USPTO better understand what additional clarity, if any, researchers and other innovators need.”

The agency will be accepting comments until September 26, 2024.