On 30 May 2013, the Intellectual Property Laws Amendment
Bill 2013 was introduced into Parliament. The Bill proposes
amendments based on the Productivity Commission's 2013
Report into Compulsory Licensing of Patents, which was
released on 27 May 2013.
Of particular interest to agencies are the proposed changes to
the Crown use provisions.
What's wrong with the current Crown use provisions?
The Patents Act 1990 permits the Commonwealth or a
state to access patented inventions for the services of the
Commonwealth or the State, without infringing the patent.
The Productivity Commission noted two main issues with the
current Crown use provisions:
the uncertainty of who is the Crown and what constitutes
"for the services of the Commonwealth or the State",
the need to improve transparency and accountability when it is
The Bill proposes to amend the Patents Act to:
clarify that Crown use can be invoked for the provision of a
service that any Commonwealth, state or territory governments (or
their authorities) has the primary responsibility for providing or
require the Crown to attempt to negotiate with the patent owner
before invoking the Crown use provisions
at least 14 days before the use, require that the Crown use
have prior Ministerial approval and the Minister provide the
applicant and the patentee with:
notice of the Minister's approval, and
a statement of reasons
insert emergency provisions (e.g. in a pandemic) where the
Crown is not required to attempt prior negotiation or provide the
statement of reasons prior to the use, and
amend the remuneration payable for Crown use to align more
closely with the compulsory licencing provisions.
What happens next?
If passed, the Bill will bring more certainty to the area of
Crown use under the Patents Act. However, it does so by limiting
the availability of the exception and by requiring agencies to
comply with a process that, except in the case of emergencies, must
be undertaken before the use occurs.
Accordingly, agencies will need to identify circumstances where
the carrying out of government services may constitute Crown use
and comply with the legislative requirements early on in the
process, rather than relying on the current provisions that allow
you to provide the services and deal with any Crown use
It is also likely that a similar regime will be introduced for
other areas of intellectual property that have Crown use
provisions, for example, copyright. We will continue to keep you
informed of any further developments.
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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