Compulsory licensing of patents, a highly topical point of
discussion in the US and many other countries, has been put
squarely on the legal reform agenda as a result of the Australian
Government directing the Productivity Commission to inquire into
the Australian compulsory licensing regime. A recently published
Issues Paper highlights the current concerns with the regime and
foreshadows some possible changes. See
Compulsory Licensing of Patents, Productivity Commission Issues
Paper, August 2012.
The Commission's inquiry arises from a number of earlier
reviews regarding the limitations of the current compulsory
licensing regime. These reviews include those that focussed on
particular technology and related concern, such as patenting of
genes, and others that focussed on the limitations and poor usage
of the current regime.
What becomes clear is that the findings of the Commission should
be relevant to patents covering all technology areas. Those patents
that are identified in the Issues Paper as of particular concern
include climate change patents, alternative energy patents, food
security patents, healthcare and pharmaceutical patents and
standards essential patents.
The Terms of Reference require the Commission to:
assess whether the current Australian provisions can be invoked
efficiently and effectively
recommend any measures to efficiently and effectively exercise
these safeguard provisions, in a manner consistent with
Australia's international obligations
recommend any alternative mechanisms, to ensure that the
balance between incentives to innovate and access to technology
best reflects the objectives of reasonable access to health care
solutions, maximising economic growth and growing the Australian
recommend measures to raise awareness of the compulsory
Through the Issues Paper, the Commission identifies a number of
measures for improving compulsory licensing. These include
clarifying the objectives of compulsory licensing, consolidating
compulsory licensing with related provisions enabling access to
patented technology such as Crown use and compulsory acquisition,
providing for alternative dispute resolution mechanisms, and more
generally, raising awareness of the opportunity to obtain
The Commission will not report until March 2013, so presently it
is too early to know how the compulsory licence regime might change
as a result of the Inquiry.
On the other hand, the question as to whether there will be
change should fairly be answered in the affirmative, particularly
given what appears to be an underlying assumption in the Issues
Paper that the current regime is neither 'efficient' nor
'effective', and the acceptance of the Australian
Government that access to patented inventions should be appropriate
in given circumstances, as manifested by the new Australian law
providing defence to patent infringement for acts involving
experimental use or obtaining regulatory approval. See
An easy guide to Australia's new patent law under the
Intellectual Property Laws Amendment (Raising the Bar) Act
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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