Amend scope of exclusive licensees under the Patents Act to clarify who can sue for infringement

Issue summary

Under the Patents Act, exclusive licensees have rights beyond those of ordinary licensees, which include the right to commence infringement proceedings in respect of the licensed patent.

Recent decisions of the Federal Court considered the meaning of the term “exclusive licensee”, and took an interpretation that may unduly limit the ability of licensees to sue for infringement and may complicate licensing negotiations for Australian companies.

The Intellectual Property Laws (Productivity Commission Response Part 1 and Other Matters) Bill 2018 introduced a definition of exclusive licensees into the PBR Act that has a similar scope to the current definition in the Patents Act.

Changes to the scope of “exclusive licensee” could be considered with regard to international best practice, including to increase the consistency of approaches taken in the patents, designs, trade marks and plant breeder’s rights legislation.

History

On hold 6 March 2016

Comments

Issue to be considered in future, but has some complexities that will require time and consultation to work through.

See also items 46 and 47.