Freedom to Explore: Using the Eleventh Amendment to Liberate Researchers at State Universities From Liability for Intellectual Property Infringements

Summary

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In Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, the Supreme Court held that the Eleventh Amendment protected states from suit for patent infringement, effectively making state universities immune from intellectual property suits. This Article analyzes how the Florida Prepaid decision affects researchers at state universities, and how those researchers may avoid liability under existing law. It first concludes that researchers at state universities might still be subject to injunctions against future infringement. The Article next observes that individual researchers at state universities might also face personal liability for damages, but then suggests that researchers at state universities should be entitled to assert qualified immunity when they are accused of patent or copyright infringement, and thereby potentially avoid liability. It then provides a framework for applying this qualified immunity, proposing that courts should grant researchers at state universities qualified immunity when their conduct does not violate a clearly established right of the patentee or copyright holder. This article proposes a counter-thrust against the current trend towards diminishing the public domain, in the form of legislation granting researchers at state universities absolute immunity from liability for patent and copyright infringement. Such a grant of immunity would create in state universities a space for exploring and developing new innovations that would otherwise be blocked by the presence of intellectual property protection-a particularly acute problem in some areas, where a veritable "patent thicket" would necessitate that any researcher desiring to work in those areas license a prohibitive number of patents from a variety of patentees.

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Freedom to Explore: Using the Eleventh Amendment to Liberate Researchers at State Universities From Liability for Intellectual Property Infringements

INTRODUCTION

Dr. Alice Little is a professor at a state university who studies the basic science involved in cloning agricultural animals, particularly cattle.1 Her research is directed at helping farmers in her state, and all over the world, improve their stock by cloning and preserving the very best of their animals. By helping the farmers who feed us, Dr. Little also hopes her work will indirectly benefit the citizens of her state and the public. However, Dr. Little has a problem. The existing protocol for cloning agricultural animals (or any other mammal) is very complicated, containing many difficult steps. Furthermore, each of these steps is incredibly inefficient, resulting in very low yields. Dr. Little and her laboratory are hard at work trying to streamline the protocol and increase its efficiency. Her problem is that various commercial entities have obtained patents on, and therefore claim ownership over, many of the necessary steps in the cloning process. These commercial entities have begun sending her letters threatening to file suit for patent infringement unless she either stops her research or pays them for the privilege of continuing her basic research into the fundamentals of the cloning process.2 She has become extremely frustrated over the rising level of patenting of these basic techniques that she needs to perform her research, and the concomitant difficulty in actually getting any research done.

Dr. Little has at least two objections to the patents. First, she believes that the patents were improvidently granted by the U.S. Patent & Trademark Office (PTO). In her view, many of the claimed method steps were well known to those versed in the cloning art, or at least obvious from that art, before the patent applications were filed.3 She also believes that at least some of the patentees have failed to comply with their disclosure obligations under the patent laws.4 However, now that the patents have been granted, she would bear a heavy and costly burden if she attempted to convince a court that the patents were invalid.5 Dr. Little objects to having her research held hostage to patents that she believes should never have been granted in the first place, with her only recourse in expensive procedures in court or before the PTO.

More fundamentally, she objects to this commercial intrusion into the traditional culture of basic scientific research.6 While she has no objections to patents when they are confined to the commercial appliedresearch sphere, Dr. Little shares the belief of many basic researchers, particularly academic researchers, that requiring a license to perform basic research is contrary to the essential culture of science, which should view this fundamental research as a cooperative endeavor to unravel the secrets of nature.7 As part of this cooperative endeavor, scientists should freely share their tools with other scientists in the interest of their shared effort to understand the natural world. Because she views basic research as a cooperative endeavor, under no circumstances would Dr. Little consider licensing the underlying technology she needs for her basic research.8 And her problem is magnified if the patentee wishes to block all others from performing the research at all, so that its own research can proceed without competition. Such a patentee could shut down Dr. Little's research completely, at least until she could find a way to work around the claims of the patent (assuming such a work-around even exists). Further exacerbating this problem is the sheer number of different commercial entities claiming rights over different steps of the process. Navigating her way through this thicket of patents and coming to terms with each of the necessary parties-any one of whom holds the power to shut down her researchpromises to be difficult, if not impossible. What is more, Dr. Little is only one of the tens of thousands of researchers at state universities around the country, more and more of whom find themselves facing this same kind of commercial threat to their basic research projects.

Dr. Little might find some hope in the Supreme Court's 1999 decision in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank,9 where the Court held that the Eleventh Amendment protects the states from suit for patent infringement.10 Under Florida Prepaid, a state and its universities are immune from suit on patents. Under the logic of the decision, this immunity should also extend to copyright and federal trademark infringement.11 While that is fine for the state and university, Dr. Little is more concerned with the impact of the decision on her personally.

Despite the introduction of several bills into Congress that attempted to avoid the limitations of the Florida Prepaid decision and make the states liable for intellectual property infringements,12 none of these proposals has been enacted to date, and so state sovereign immunity from suit for intellectual ...

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