Patents and research

June 3, 2008 2:02 PM

I want to do a research study involving someone else's patented idea. What magic powers do patents have on the use of the idea in research?

I’ve got a research idea that revolves around the use of cartoons in test directions. I got the idea from a published test. Notice that the picture of the directions indicates that there is a patent pending.

How much does that limit the use of that idea for research purposes? I just want to investigate a question about cartoon directions, and that would require replicating those directions for another test, but I’m not trying to sell my derivative work. Note that it would be part of my dissertation, which means I would be publishing my derivative work in that form.

What are the limits of patent power? How narrow are their domains? It’s almost certain this is not a novel idea (illustrations to support test directions are not a new invention, though perhaps with thought-bubbles, etc. it is). At what point does another test using cartoons for directions infringe on this patent?

You are not my patent lawyer, I know, but what are the basics I need to know before I dig in?

posted by parkerjackson to law & government (3 comments total)

I don't know how patents relate to academic research, but "patent pending" can mean "we filed a provisional patent" which costs all of $250, lasts 12 months, doesn't require prior art, doesn't turn into a real patent until you submit a real application, and doesn't require any verification of claims. It isn't necessarily an enforcable patent in the works.
posted by cmonkey at 2:35 PM on June 3

This is from the website of a nonprofit that patents and licenses their own inventions:
The exclusive right provided by the patent is the right to exclude others, meaning that consent must be obtained from the owner for any commercial use or development of something that is claimed by the patent. Academic use of something claimed by the patent does not require permission from the owner.

That fits with my recollection that patents (when issued) only apply against commercial use of the invention. Also, since part of filing the patent is to publicly disclose the idea, there is no patent infringement in publishing something regarding the idea. Even then the scope of their patent power will depend on the claims approved by the patent office which you won't know until the patent finally issues years from now.

However, there could be copyright infringement if you are using the same words and images as the source. So then you have to ask if replicating the test directions falls within fair use for copyright purposes. So, you may want to ask permission to use their directions in your research if you are using their directions (and not just the idea of cartoon instructions). They look like a big company so I'm sure they will already have a standard answer to your inquiry - hopefully a one page, free license for use in academic research.
posted by metahawk at 4:41 PM on June 3

There is no research or academic exception in patent law, unless your research is directed toward getting FDA approval of a drug or device. If you go here you can put Nalgieri into the search box as inventor and find the pending applications. Here you can find how they are progressing through the PTO. I only looked at the first and third ones, but nothing really has happened with either one. Until the patents issue there is nothing the patent holder can do, the patent is not enforceable. However, damages can be collected for infringement of published claims which later issue. If you are serious about this research you should seek competent legal counsel who can advise you on the probability of a patent issuing, ways around the claims, other ways to proceed and perhaps even how to get a license if needed.
posted by caddis at 5:42 PM on June 3 [1 favorite]