In a potentially dangerous development for patent holders, the Australian Government, in an adventurous move, has accepted the recommendation of the Australian Council on Intellectual Property (ACIP) to introduce an experimental use exemption (EUE) under the Patents Act. To be clear, this is not an amendment to current law, it constitutes the introduction of a statutory EUE where previously none existed. Moreover, the notion of an EUE does not feature in our precedent law.
The Australian Government is proposing to amend the Patents Act such that "The rights of a patentee are not infringed by acts done for experimental purposes relating to the subject matter of the invention that do not unreasonably conflict with the normal exploitation of a patent."
Acts done for experimental purposes relating to the subject matter of the invention are likely to include:
determining how the invention works;
determining the scope of the invention;
determining the validity of the claims;
seeking an improvement to the invention.
When introduced, this exemption may provide wily patent infringers with an argument that their use of a patented invention to develop a modified version to, for example, "get around" the patent was carried out under the umbrella of this exemption. No doubt this will lead to significant added expense as patentees are forced to fight such nebulous issues through the courts.
The introduction of a new statutory EUE in Australia is a step in the opposite direction to developments in the US which have resulted in the EUE being confined to an extremely limited set of circumstances (Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002)). Patent holders will, therefore, need to consider ways to ensure that their rights are not eroded in this jurisdiction under the new laws.
We await the release of the Government legislation to enable a detailed analysis of the exemption.
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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