The Experimental Use Exception and Undergraduate Engineering Projects

INTRODUCTION I. CAPSTONE SENIOR DESIGN PROJECTS A. The Accreditation Board for Engineering and Technology B. Exemplary Capstone Senior Design Projects 1. Typical Characteristics of Capstone Senior Design Projects 2. Typical Projects in the Computer and Software Engineering Degree Programs at MSOE 3. Typical Projects in the Mechanical Engineering Degree Program at MSOE C. Comparing Graduate Research to Undergraduate Capstone Senior Design Projects 1. Characteristics of Graduate Research 2. Characteristics of Undergraduate Capstone Senior Design Projects II. PATENT INFRINGEMENT AND THE EXPERIMENTAL USE EXCEPTION A. Origins and Development of the Experimental Use Exception B. Narrow Interpretation of the Experimental Use Exception and the Federal Circuit C. New Life: The Food and Drug Administration Safe Harbor III. THE EXPERIMENTAL USE EXCEPTION AND CAPSTONE SENIOR DESIGN PROJECTS A. Industry-Sponsored Projects B. Design-Competition Projects C. Student-Sponsored Projects CONCLUSION INTRODUCTION Following four long years of higher education, Joe Engineering Student is looking forward to graduation and reaping the benefits of his education. After countless hours spent reading textbooks, answering homework problems, studying for and taking exams, and working on laboratory projects, Joe is finally ready to take his proud stroll across the graduation stage. He is especially proud of the fine work he and his partners have done on their capstone senior design project over the past nine months. Joe is, in fact, so proud of his team's fine engineering work that he has included a brief description of the project on the resume he has been using during his search for employment, and his team has taken the time to chronicle their efforts using a web page. (1) It is only a matter of days before Joe and his partners will be giving their final presentations to the rest of their classmates and taking part in the annual senior design show. Joe has been looking forward to this day because not only will it represent the culmination of this hard-won education, but he will also have the opportunity to show off the project to his fiance and the rest of his family. On this day, like many others, he stops by his mailbox on the way to class. Within the mailbox he finds a letter from Brown & Smith. Joe cannot recall sending a copy of his resume to an engineering firm by that name, but he opens it immediately thinking it might include a job offer. His hopes are quickly dashed. Brown & Smith have sent Joe, and the rest of his project teammates, a cease and desist letter. According to Brown & Smith, Joe's project appears to infringe upon one or more of their client's patents. The letter further informs Joe that failure to immediately cease the infringing activity makes him liable for treble damages. What is Joe to do? If he heeds the letter, then he cannot present his project. If he does not present his project, then he cannot graduate. And there simply is not time to figure out how the project may be infringing upon the indicated patents, much less re-engineer the project so that it is no longer infringing. What can Joe do? After panicking, Joe calms down and calls his aunt, an intellectual property attorney. His aunt explains to him the unlikelihood that he and his team will, in fact, be sued for this alleged infringing use. (2) While this may be of some comfort to Joe, it really does not help Joe answer the real question regarding his legal options should he and his team be found to be infringing. Assuming, arguendo, that Joe's project does infringe some of these patents, what substantive legal advice can be given to Joe? In general, U.S. patent law provides a patent holder only with negative rights with respect to a patent. …