by Becky Mahurin

I have recently encountered questions from researchers regarding their use of technologies patented by others. Can a researcher utilize published processes/ compositions for research purposes if these technologies are still under patent?

The answer is no. Patent law provides the patent holder a period of monopoly - 20 years from date of filing. In exchange, the patent holder must "enable" or teach the technology in the filing. The patent, once issued, becomes a published document. The patent holder may also choose to publish his research (i.e. subject of the patent) in the literature. This does not release those reading the publications to practice the technology.

For instance, if a method or a chemical is patented, an independent researcher may not replicate the method or produce the chemical, even for a noncommercial purpose. If a researcher chose to synthesize the patented chemical and use that in his research, it is possible for the patent owner to sue MSU and the researcher for patent infringement. Should the patent owner win, the courts may award him treble damages-three times the cost of the chemical.

Research exceptions would dilute the value of a patent because research may be the primary market for a patented chemical. The main inducement to file for a patent is the promise of exclusivity or monopoly. Otherwise, one might not choose to fully disclose and enable others. The patent system was designed to further technologies by providing for full disclosure such that others may learn from the enablement and then push for technological improvements and next-generation methods and compositions.

If you have questions regarding the use of patented technologies or other questions relating to patenting and intellectual property protection, please call me at 994-7868.

Becky Mahurin
Director of the Technology Transfer Office at MSU

© 2000 Montana State University-Bozeman
Discovery October 1998

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