By Eugene M. Paige of Keker & Van Nest
Eugene M. Paige, a partner at Keker & Van Nest, LLP in San Francisco, focuses his practice on litigation, especially the litigation of intellectual property matters. He served as a
law clerk to the Honorable Anthony M. Kennedy of the Supreme Court of the United States in 2000-01, and to the
Honorable Alex Kozinski of the United States Court of Appeals for the Ninth Circuit in 1998-99.
To decide whether patent law may limit academic freedom, consider three issues. First, whether the background
rules of law provide protection for academics. Second, whether the areas covered by patents are of interest to
them. And third, whether the entities that hold rights to patents may end up asserting those rights. The answers
to those three questions suggest that the possibility of impact on academic pursuits exists.
For the first issue, it may be instructive to compare the background rules of patent law with those of
copyright law, as the Supreme Court has said that the two bodies of law share an “historic kinship.”
Sony Corporation v. Universal City Studios, 464 U.S. 417, 439 (1984). Despite that relationship, the
two diverge when it comes to protection of academic uses of intellectual property. In copyright law, the doctrine
of “fair use” can be a shield against attempts to create liability for academic use of copyrighted
material. Indeed, one of the statutory factors in considering wh...