conducted using patented inventions will not infringe the rights of the patent
holder, once the Federal Government follows through with its announcement on 6
August 2007 that it will amend the Patents Act 1990 (Cth) (Act). This
exception, when introduced into law, should clarify the legal rights of anyone
engaged in research and development activities. In particular, researchers
whose research may involve the use of a patented invention should be able to
assess more accurately, whether they need to obtain the permission of the owner
of the patent.
The Government is
responding to the recommendations made by the Advisory Council on Intellectual
Property (ACIP) in its October 2005 report on patents and experimental use.
ACIP examined the current state of the law, and found that it was not clear
that there is an existing exception from infringement for experimental uses of
patented inventions. Interestingly, it also found that this did not seem to be
inhibiting research on inventions in Australia, because researchers tended to
act as if an implied exception did exist to protect them from infringement
actions. However, ACIP's recommendation was that, to increase certainty for the
owners and users of intellectual property, there should be an express
legislative exception for acts done for experimental purposes.
ACIP's proposed exception
means that acts done in respect of a patented invention which:
are done for experimental
relate to the subject
matter of the invention; and
do not unreasonably
conflict with the normal exploitation of a patent,
will not infringe the
According to ACIP's report,
in some cases experimentation may be covered, even if the final goal of
carrying out the research is to develop a product, which can be commercialised.
To provide further guidance
on the application of the exception, ACIP also recommended that certain acts be
listed as examples of acts done for experimental purposes relating to the
subject matter of the invention, as follows:
determining how the
determining the scope of
determining the validity
of the patent claims; and
seeking an improvement to
In its response, the
Government accepted ACIP's recommendation in principle, and stated that the
exception will reflect the recommendation 'to the extent possible' in light of Australia's international obligations. In particular, the World Trade Organisation
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement) prohibits countries from implementing exceptions to a patent owner's
exclusive rights, unless the exception does not 'unreasonably conflict with the
normal exploitation of the patent' and does not 'unreasonably prejudice the
legitimate interests of the patent owner, taking account of the legitimate
interests of third parties'. While ACIP's recommended exception reflects the
first limb of this test, the Government will wish to ensure that the exception
does not prejudice patent owners' legitimate interests, and therefore breach
the TRIPS Agreement, before amending the Act.
The introduction of the
exception recommended by ACIP should provide greater certainty to both the
owners of patents and those who experiment on them. There are currently few
patent infringement actions brought against persons for carrying out research
on another person's patented invention without permission. However, if patent
holders wish to start enforcing their rights in these circumstances, both they
and the alleged infringer would face difficulties in assessing the strength of
their relative positions, given the lack of guidance currently provided by
While one of ACIP's
considerations in framing its proposed exception was to make it as clear as
possible, it also recognised that the legislative exception could not be
completely prescriptive and would inevitably leave room for doubt as to its
application to particular facts. For example, ACIP suggested that the list of
acts falling within the exception be non-exhaustive (to permit flexibility),
rather than exhaustive (which may have provided a greater degree of certainty).
No matter what wording is adopted by the Government in drafting the amendment
to the Act, there will be areas of uncertainty which may, in turn, require clarification
before the courts.
However, the adoption by
the Government of ACIP's recommendation is a further step towards creating a
more certain legal environment, in which both the owners and users of patents
have a better understanding of their respective rights, and in which
researchers have increased confidence to engage in innovation with less fear of
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to the subject matter. Specialist advice should be sought about your
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