Monsanto Co. was recently awarded one billion dollars for The
DuPont Co.'s infringing use of Monsanto's GM patent. DuPont
was found to have infringed the patent during the
development of its yet to be released Optimum GAT soybean
line. Such a win in Australia would be unlikely under the new
research exemption passed in the recent Raising the Bar Amendment
to the Patents Act. This may make Australia a more appealing place
for companies to perform product development where development may
be at risk of infringing a patent.
Monsanto developed genetically modified (GM) seeds which
conferred resistance to the Roundup (glyphosate) herbicide. The GM
technology is patented with the US patent due to expire in 2014.
DuPont started developing genetically modified soybeans. During
research and development, DuPont used Monsanto's GM technology.
Whilst no commercial product has yet been released on the market,
Monsanto successfully argued that this unlicensed use was an
infringing use, and was not protected by any research exemption
under US law.
In April 2012, Australia passed the Raising the Bar Bill which,
amongst other things, introduced a broad research exemption to
patent infringement. If DuPont was now to perform such development
work in Australia, then it is likely that such work would be exempt
from infringement. The new research exemption is quite broad, and
covers a wide range of otherwise infringing acts if they are
conducted for experimental purposes. This includes:
improving or modifying the invention;
determining the properties of the invention;
determining the scope of a patent claim or the validity of
patent for an invention; and
determining whether doing an act would infringe a patent.
Whilst the exemption is yet to be judicially considered, the
Government's explanatory documents make it clear that the
intention is that the exemption will apply to acts performed for
the predominant purpose of gaining new knowledge. This includes
trying to improve a patented product even if the ultimate aim is to
commercialise the improved result.
The amended research exemption appears to be stronger than the
equivalent provisions available in the US, and this may make
Australia an appealing place to perform research and development
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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