Patents and Experimental Use: A Submission to the Advisory Council on Intellectual Property

Rimmer, Matthew & Rajendra, Krishna (2004) Patents and Experimental Use: A Submission to the Advisory Council on Intellectual Property.

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Abstract

ACIPA welcomes the opportunity to make a submission to the Advisory Council on Intellectual Property issues paper, "Patents And Experimental Use". It is concerned that there is great uncertainty whether researchers can rely upon a defence for experimental use. ACIPA recommends that the Commonwealth should amend the Patents Act 1990 (Cth) to establish a new defence to a claim of patent infringement based on the use of a patented invention to study or experiment on the subject matter of the invention; for example, to investigate its properties or improve upon it. The legislation should make it clear that the existence of a commercial purpose or intention does not affect the availability of the defence. ACIPA believes that such a research exemption is in keeping with our international obligations. Indeed, it is of the opinion that a defence for experimental use is compatible both with the TRIPS Agreement of the World Trade Organization and the recently concluded United States- Australia Free Trade Agreement.

ACIPA maintains that a defence for experimental use is a unique policy reform - because it would enable researchers to use a patented invention without either seeking permission from the patent owner or paying royalties. It can be distinguished by these characteristics from a number of other policy options. Thus, licensing, patent pools, and open source licensing depend very much up the patent holder providing permission for an invention to be shared in that way. Furthermore, compulsory licensing can compel a patent holder to give access to patented inventions - but the user is still obliged to pay royalties. Nonetheless, ACIPA observes that a defence for experimental use can be supplemented by additional reforms to patent law. The threshold patent criteria of novelty and inventive step could be tightened, in line with the dissenting judgment of Justice Kirby in Aktiebolaget Hassle v Alphapharm Pty Limited.4 The compulsory licensing provisions in the Patents Act 1990 (Cth) need to be modernised to reflect contemporary concerns about competition policy. There should be greater use of creative licensing, patent pooling, and open source licensing to share patented technology. However, none of such reforms could be considered to be a substitute for the recognition of a defence of experimental use.

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ID Code: 86926
Item Type: Report
Refereed: No
Keywords: Intellectual Property and Innovation Law Research Group
Divisions: Current > QUT Faculties and Divisions > Faculty of Law
Copyright Owner: Copyright 2004 Matthew Rimmer & Krishna Rajendra
Deposited On: 12 Nov 2015 01:29
Last Modified: 27 Jun 2017 19:59

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