Watermark

7 August, 2007
Over the last 4 years, the Advisory Council on Intellectual Property (ACIP) has been involved in examining "whether some types of patents are inhibiting research and development in Australia" Furthermore, ACIP were asked to "determine whether both Australian researchers and business would benefit from [the introduction of] an experimental use exemption provision into Australian patent legislation".

The need to consider this arose partly from concerns that patent rights may be inhibiting research and development. Furthermore, there were concerns that there was insufficient return on investment in Australian research and development due to unsuccessful commercialisation.

The Australian Government has just agreed to amend the Patents Act 1990 to introduce an experimental use exception. This exception is to be defined in accordance with the recommendation made by ACIP and is to be consistent with Australia's international obligations. The recommendation by ACIP sets out that a provision be introduced into the Patents Act 1990 to effect the following:

"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 include:

• determining how the invention works;
• determining the scope of the invention;
• determining the validity of the claims;
• seeking an improvement to the invention."

Further to this, IP Australia is to provide appropriate guidance on the experimental use exception to accompany the proposed legislation and must also provide general guidance on the exception including updates as the law develops.

ACIP also recommended that the Government consider reviewing the impact on Australian industry of the absence of an exception from infringement for activities undertaken prior to the end of the initial patent term relating to obtaining regulatory approval. The Government is currently of the view that there is no strong indication that the absence of an exception has an impact on Australian industry.  It has been noted that some concerns have been raised by the agricultural chemical industry regarding the absence of such an exception but in the absence of further information, the Government is not yet prepared to commit to such a review.

It is not clear when draft legislation will be available for review, however, given the imminence of a Federal election, the legislative amendments required may be delayed.

The full Government response and a copy of the report can be found at www.ipaustralia.gov.au and www.acip.gov.au.
Carolyn Harris