The document discusses the experimental use exception in patent law. It provides that the exception protects experimental activities from charges of patent infringement. It balances incentivizing innovation through patents with allowing third parties to experiment and improve upon patented technologies. The exception has been interpreted both narrowly, only allowing experiments to validate a patent's disclosure or for philosophical curiosity, and broadly, permitting experiments to develop improvements or design around a patent. Indian patent law has included an experimental use exception since 1970 based on balancing patent rights and encouraging domestic innovation.

1. Experimenta
l Use - I
©DR. VIKAS BHATI, DR. RMLNLU, LKO.

2. WHAT?
Exception that protects experimental activities from charges of patent infringement.
Rationale: validate the disclosure function of patents and provide guarantee of fulfillment of the
bargain. (experimentation necessary to test it and ensure that it works as claimed and would
also save us from clever drafting).

3. Context under the patent law.
A. Incentive Theory: patent incentivize innovations and spur advances in S&T.(1)
B. Bargain Theory: patent is a bargain between state and the inventor- which is one who
discloses in detail is granted a state sanctioned monopoly for 20 years for such disclosure.
In latter, if not the patentee would opt for secrecy thus depriving society of knowledge.
The working of both is not assured for different reasons, but it can be said that latter can be
ensured by rigorous application of enablement doctrine.
Here enters the Experimental use exception, as without it enablement would be meaningless.
Further, it could offer insights to a researcher who might then improve upon it or even work
around it and create an alternate technology.
1. CONTESTED IDEA THAT INCENTIVIZATION OF INVENTION WOULD HAPPEN AS THERE IS NO EMPIRICAL EVIDENCE AND FURTHER 1. COUPLED WITH THE BLOCKING EFFECT OF PATENTS ON THE RESEARCHERS.
2. 2PATENT APPLICATIONS DRAFTING CAN BE CRAFTED IN A MANNER WHERE THEY DISCLOSE LESS AND HIDE MORE.

4. Need to Use v. Need to Sufficient
Incentivization
Sec. 48 gives patentee a right to exclude from use among others.
Strict adherence to this right could potentially block research by 3rd parties attempting to use to
expand the technology. -------- Thus, a derogation is required.
Likewise, exception should also be a limited one, deter from the incentive to create in the first
place.
Balancing of two competing concerns required coz if incentive to create is gone, there would be
no technology to experiment with in the first place. (that balance varies from country-to-
country)

5. Outline of experimental use exception
Either a narrow interpretation or broad for the same exception. (1)
The start Whittemore v. Cutter, 29 F. Cas. 1120 (C.C.D.Mass.1813) (J. Story’s two reasons)
a. need to ascertain whether the patentee has made a sufficient and enabling disclosure.
b. need to encourage purely ‘philosophical experiments’ to foster growth of S&T.
Former has not been much controversial(2) the latter has been.
1TRAGEDY OF COMMONS AND ANTI-COMMONS DEBATE/ BOTH ARGUE THAT THERE INTERPRETATION ENCOURAGES SCIENCE AND
INNOVATION.
2. IT COMPLETES THE QUID PRO QUO THUS A 20 YR. GRANT.
ADMINISTRATIVE BURDEN IS PARTIALLY TAKEN OFF FROM THE PO’S.

6. Philosophical Experimentation
Struggle between proponents of broad and narrow interpretations.
Broad interpretation: allowed to develop fellow-on inventions and improvements(a) and invent around or design around the patented
invention.(b)
- basis: Bargain theory stronger version (+ to further the progress of S&T)
- Not against incentive theory as (a^) would likely use components of original patented invention and thus would require license. Further,
access to information would be of little use, unless it could be used in a meaningful ways to advance the technology.
Question does that hold true for “design around”. Not for 1, would naturally implicating the patentee’s right, thus would remove the
incentive of a putative patentee. Counterargument to it is premised again premised on bargain theory and not on whether the patentee’s
right’s are implicated or not.
Advance of technology ≠ mere use
Law should not prevent emergence of new technology on premise of that the patented technology would be obsolete. rather., the fear of
becoming obsolete will ensure the patent holder to continuously work on improving the technology.

7. Contd..
Narrow approach: only in two cases, 1. to test that the patentee had made an enabling disclosure
and 2. only those experiments which are strictly philosophical in nature, i.e., to satisfy scientific
curiosity and not with a view to further commercial interests.
It thus removes use to improve on or invent around as it is contrary to incentive theory..
Another reason it would cause move towards secrecy.(1)
1. IT MIGHT BE OVER STATEMENT AS TRADE SECRECY WOULD FAIL IN SELF DISCLOSING INVENTIONS, EG. PHARMA COMPOUND WHICH ARE ROUTINELY REVERSE ENGINEERED.

8. Under Indian patent Act, 1970
Exist since 1970 basis was the Ayyangar Committee Report which was the basis of 1970 Act.
1911 Act biased in favor of foreign patentees, who merely obtained patent rights in India to secure
monopolies and import into. Patents were not used in India, nor help the indigenous industry and
imposed exorbitant costs on Indian consumers. To reverse this and encourage indigenous innovations
AC made recommendations to amend Patent law, one was experimental Use.
Rights conferred upon the patentees do not impede the “rights of research workers to use the
invention- whether it be an article or a process- for the purpose of carrying out experiments- in the
course of research as distinguished from use for a commercial purpose”
The recommendation made a distinction between use for experiments and commercial purpose, the
same does not reflect in Sec. 47 (thus exception u/S. 47 > recommendation).