Washington Law Review
In its 1999 decision 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. Whether such a violation has occurred should be analyzed in much the same way that willful infringement is analyzed. Going beyond existing law, this article proposes 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. Thus freed from concerns over patent infringement, researchers at state universities could continue their work for the benefit of the citizens of their states and other states, in keeping with the mission of state universities.
Pulsinelli, Gary, Freedom to Explore: Using the Eleventh Amendment to Liberate Researchers at State Universities from Liability for Intellectual Property Infringements. Washington Law Review, Vol. 82, No. 2, 2007, Available at SSRN: https://ssrn.com/abstract=1023087