This Article explores the idea that a faculty member acting in the role of an academic researcher in the scientific disciplines should be viewed in the context of patent law as an autonomous entity within the university rather than as an agent of the university. The structure of the university laboratory within the university and the social norms associated with the activities that members of the research laboratory conduct supports such a view. Additionally, the data from the implementation of the Bayh-Dole Act reveal that universities and faculty scientists have different goals and motivations regarding the transfer of new technology to the private sector. Acknowledging a distinction between the university and its academic researchers would revive the application of the experimental use exception as a defense to patent infringement for the scientists who drive the innovation economy of our country. Also important, this distinction has implications for the way that entrepreneurship is defined in the context of academic researchers. A better understanding of academic entrepreneurship may lead universities to restructure incentives to encourage academic researchers to participate in transferring new inventions from the laboratory to the private sector.
Jennifer Carter-Johnson, Unveiling the Distinction between the University and its Academic Researchers: Lessons for Patent Infringement and University Technology Transfer, 12 Vand. J. Ent. & Tech. L. 473 (2009-2010).