In the ongoing battle between Monsanto, E.I. DuPont, and Pioneer Hi-Bred over its genetically engineered seed products that are tolerant of herbicides such as Roundup (allowing farmers to kill weeds without detrimentally affecting crops), a jury concluded that mere research on a patented product was enough for infringement. Sales of any commercial product were not necessary to invoke liability for reasonable royalties to the patent holder. This is something researchers should keep in mind, especially when they are working in state of the art technology areas or on long term projects which continue to develop earlier discovered (developed) technology. Situations can become complex when there is a jointly owned inventive concept or where technology has been licensed or sold to third parties along the way. Three things you can incorporate into your company technology program and policies to minimize liability risks are:
- maintain accurate up to date records of who has rights in every invention (because this often changes over time);
- keep abreast of published patent applications and issued patents in your technology area by using an alert service or periodically reviewing the UPSTO publications; and
- Include a freedom to operate analysis by your legal team in any of your project concept reviews.