Experimental use exemption from patent infringement

Overview

  • Raising the Bar is a major reform to Australia's intellectual property legislation.
  • The reforms include an experimental use exemption from patent infringement.
  • The reforms free researchers to focus on their research, instead of worrying about threats of litigation.
  • The exemption applies to work done for experimental purposes relating to the subject matter of the invention.

What is happening?

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 amends the Patents Act 1990.  The Act amends the Patents Act 1990 to clarify, broadly, that experiments on patented inventions do not constitute patent infringement.

Why introduce the exemption?

The patent system exists to encourage innovation and knowledge sharing. It rewards the inventor with a time-limited exclusive right to exploit their invention. In exchange the way the invention works must be disclosed to the public. In this way innovators gain a competitive advantage to commercialise their inventions, while the public and the research community gain information about new technology. Researchers can then study, test and improve on the new technology for the benefit of society as a whole.

However, problems arise where there is uncertainty about the extent to which patent rights impinge on freedom to research. Uncertainty discourages researchers from working in areas where there are patents, and where they may be at risk of being sued for infringement. It also leads to researchers expending effort and expense on obtaining advice, when they have concerns about how their experiments intersect with the patent system. These inefficiencies detract from scientific inquiry.

Concerns had been raised that the lack of a statutory exemption from infringement for research and experimental activities in Australia was hindering research and follow-on innovation. Although it is generally accepted that some form of implicit experimental use exemption exists, there had been no litigation of this under Australia's previous patent legislation. As a consequence, the existence and scope of any implicit exemption was uncertain.

When will the exemption come into effect?

The exemption became law on the Monday 16 April 2012. It exempts experimental activities done, on or after that date.

What activities are exempt?

The exemption covers work done for experimental purposes relating to the subject matter of the invention.

What is an 'experimental' purpose?

The term 'experimental' should be given its ordinary English meaning. The exemption should apply to tests, trials and procedures that a researcher or follow-on innovator undertakes as part of discovering new information or testing a principle or supposition.

What if I'm not aware that I'm experimenting on a patent?

The exemption covers circumstances where a researcher may be unaware of the existence of the patent, and include the subject matter of a patent as part of a larger more complex experiment.

Does the 'experimental' purpose need to be the sole purpose of my experiments?

As research is frequently undertaken for mixed purposes, the exemption applies where:

  • a researcher may be contracted and paid to undertake experiments
  • research may be conducted with a view to ultimately commercialising the end-products of the experimentation
  • research may be undertaken with, and partially funded by, a commercial partner.

For each of these circumstances the exemption applies for the predominant purpose of gaining new knowledge, or testing a principle or supposition about the invention. If an activity is conducted with the primary purpose of improving a patented invention, the activity would still be exempt, even if the person is also considering commercialising the improvement in the future. 

What specific experimental acts are covered by the exemption?

To provide clarity for researchers, an inclusive list of activities that are deemed to be experimental has been included in section 119C of the Patents Act 1990. The following activities are exempt:

  • determining the properties of the invention
  • determining the scope of a patent claim relating to the invention
  • improving or modifying the invention
  • determining the validity of the patent or of a patent claim relating to the invention
  • determining whether the patent for the invention would be, or has been, infringed by the doing of an act.

This list is not intended to be exhaustive. A court may find other activities also fall within the meaning of 'experimental'.

What activities are not exempt?

The exemption does not apply where the main purpose is to commercialise a patented invention, or to manufacture it for sale or use for commercial purposes.

Can I use the exemption to conduct market research?

Market research on a patented invention (eg making and using the invention to test the likely commercial demand for a product) is not exempt, as the purpose of market research is too predominantly commercial.

Can I use a patented research tool to experiment on something else?

The use of patented 'research tools' is not exempt from infringement. A 'research tool' facilitates an experiment, and is not the subject of the experiment. For example, a researcher testing the effect of a particular herbicide on different plants might use a patented wetting agent to facilitate the uptake of the herbicide. Here use of the wetting agent should not be exempt from infringement. The agent is being used as a tool: the experiments on the herbicide do not relate to it.

If the experimental use exemption were to apply to research tools it would substantially diminish the economic incentive to develop better research tools.

Please note; IP Australia can only explain the policy intent of the amendments at the time of enactment. If you need advice on your specific situation or subsequent interpretation of the exemption by the courts, you may wish to consult a registered patent attorney or an intellectual property lawyer.