Whether or not experimental activities can amount to patent infringement has been a long-standing area of uncertainty under Australian law. On 9 November 2005, ACIP’s report to the Minister for Industry, Tourism and Resources, Warren Entsch, was publicly released. It recommended that an experimental use exemption be included in the Patents Act 1990 (Act).
The Advisory Council on Intellectual Property (ACIP) commenced its review of this area in late 2003, prompted by the uncertain state of Australian law. There is currently no relevant experimental use exemption in the Act and no Australian case has looked at whether or not there is an exemption at common law (or what scope such an exemption would have).
In its October 2005 final report, ACIP has recommended to the minister that the Australian Act be amended to expressly provide that a patentee’s rights are not infringed by acts done for experimental purposes, provided that:
the experimentation relates to the subject matter of the relevant patent, and
the experimentation does not unreasonably conflict with the normal exploitation by the owner of the patent.
What Is An Experimental Purpose?
ACIP also recommended that the statutory provision explain that the following were examples of relevant experimental purposes:
understanding how the invention works
determining the scope of the invention
assessing the validity of the patent claims, and
developing improvements of the invention.
It has also recommended that IP Australia provide guidance to researchers and the public on the scope and operation of the experimental use exemption, if it is introduced.
Some Details Of The Exemption
The proposed statutory exemption is modelled closely on the exemption in European patent law, and would mean that the research would need to be looking into the patented invention itself, rather than simply using the patented invention as part of a broader research activity. A practical illustration is that the statutory exemption would not allow someone to import a patented microscope, simply because they were going to use it for research purposes—the person would need to at least be investigating how the patented aspect of the microscope actually worked.
The exemption would also require a court to consider the commercial impact on the patentee, which would prevent a person from trying to rely upon some technical interpretation of the exemption in order to protect what was truly a substantial commercial undertaking.
Unfortunately ACIP’s report has not addressed the issues associated with third parties, including suppliers to researchers and those carrying out work under contract for researchers. Each of those people may also be infringing a relevant patent, either directly or under the contributory infringement provisions.
Under ACIP’s proposal a number of details of how the proposed exemption would work are left for a court to develop if and when a suitable case arises.
What Happens Next?
The Minister for Industry, Tourism and Resources, Warren Entsch, and his department will now consider ACIP’s report and whether or not the government should implement its recommendation. A number of ACIP’s recommendations from previous reports have been implemented, and given the breadth of concern expressed in ACIP’s report regarding the uncertainty in this area, it seems likely that there will be some statutory amendment to the Act next year.
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