Robert S. MacWright, Ph.D., Esq., University of Virginia (UVA) Patent Foundation Executive Director; John Breen, Ph.D., Esq., UVA Patent Foundation Senior Patent Counsel; and Rick Kast, Esq., UVA Associate General Counsel and Special Assistant Attorney General offer a presentation titled, "Can Patents Block My Research?." They offer advice on steps university researchers should take in considering the potential impact patents may have on their investigations.
They conclude, in response to the question posed in their presentation title, that "the highest U.S. patent court has ruled that university research is NOT exempt from liability for patent infringement." Some highlights from the presentation:
Implications of Madey v. Duke
- There is no safe haven for academic research!
- It is risky business to ignore patents. You need to actively steer clear of of them, license them, or buy from licensed vendors.
- If you discover a patent issue, you need to bring it to the University’s attention.
The Risks If You Infringe
- A patent owner could sue UVA for patent infringement; They could also sue you personally
- Defending an infringement suit can cost well over $1,000,000!
- The patent owner might seek and obtain a preliminary injunction to stop your research almost immediately
- Your research program may have to be completely re-designed
- Your valuable research time and energy could be consumed by legal matters
See the full presentation here.