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

Policy ID: 
19
Status: 
On hold
Priority: 
Medium
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 found that it is narrower than other jurisdictions, which may unduly limit the ability of licensees to sue for infringement. This does not reflect current business reality and has the potential to complicate licensing negotiations for Australian companies.

Amendment to the definition of exclusive licensees in the Patents Act to reflect overseas practice and expand standing for licensees could be considered.

History: 
On hold 04-Sept-2017
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.

Tag: 
Patents

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