Research Pledge FAQ
- 1 Who may take advantage of the GreenXchange Research Non-Assertion Pledge?
- 2 Do I have to execute an agreement to take advantage of this Pledge?
- 3 What are some examples of Non-Commercial Use?
- 4 Can the Research Non-Assertion Pledge be terminated or revoked?
- 5 Can Grantors Specify Only Some Patents To Include The Research Non-Assertion Pledge?
- 6 What is the intersection between this pledge and the “experimental use” exception under patent law or the exception under Section 271(e)(1) of the Patent Act?
- 7 What if someone relying on this pledge makes an invention or improvement? Are they required to give away any rights in those?
Who may take advantage of the GreenXchange Research Non-Assertion Pledge?
Anyone who works at a Non-Profit Institution (e.g., most universities, colleges, and non-profit research organizations) engaged in Non-Commercial Research Use (e.g., internal experimental use, but not contract research services) may rely on this Research Non-Assertion Pledge ("Pledge"). Typically, these are academic research efforts that result in scholarly publication.
Do I have to execute an agreement to take advantage of this Pledge?
No. The Pledge is intended to be relied upon without any need for paperwork or online registration. It's simply a unilateral promise by the person or entity that takes the Pledge.
What are some examples of Non-Commercial Use?
Typical examples of Non-Commercial Use would be practicing an invention while conducting experimental academic research based at a university or a non-profit laboratory. A charitable or non-profit institution that conducts basic research will generally qualify. However, activities conducted in exchange for money or other consideration, like commercial sale of a product or service, or activities for the benefit of third parties like contract research services for money would not be considered a Non-Commercial Use. In determining whether a use is a Non-Commercial Use, consideration should be given to whether the use is internal or external, whether there is cash or other valuable consideration exchanged, and whether the use serves an essential purpose related to the organization’s non-profit mission. For example, use as part of education is considered a Non-Commercial Use, even though students may pay for tuition, because this relates to an essential non-profit mission of universities.
Can the Research Non-Assertion Pledge be terminated or revoked?
Yes, there are two scenarios. The first is when the beneficiary of the Pledge initiates a patent infringement claim against the Grantor or its customers. The Grantor may terminate the Pledge as it relates to the party bringing the action in order to allow the Grantor to assert its patents in connection with defending against the action. This is sometimes called “defensive termination”.
The second scenario is if the Grantor wishes to withdraw certain patent rights from the Pledge or to terminate the Pledge in its entirety, it may do so by providing notice on its Web site, but it must provide at least a 12 month grace period for the completion of existing research projects.
Can Grantors Specify Only Some Patents To Include The Research Non-Assertion Pledge?
Yes. The Grantor can specify that only specific patent rights are included in its Pledge. The Grantor has wide discretion to determine how it wants to specify or describe those rights. It may also withdraw certain patent rights from the Pledge upon notice on its Web site where the Pledge is made, provided that it gives a Grace Period of 12 months to complete existing research.
What is the intersection between this pledge and the “experimental use” exception under patent law or the exception under Section 271(e)(1) of the Patent Act?
The pledge is independent of, and in addition to, any available exceptions and exemptions under applicable patent law. It does not affect the availability of those exceptions. However, it should be kept in mind that the courts have drastically narrowed the experimental use exception so that in many cases it will not be applicable.
What if someone relying on this pledge makes an invention or improvement? Are they required to give away any rights in those?
No. Nothing in this pledge requires the user to grant licenses or assign inventions back to the Grantor or to the community. Users are free to retain ownership of their own inventions and/or license them as they choose.