Research & Experimental Useof Patented Inventions

Brian Opeskin

Australian Law Reform CommissionAAAS Workshop, Washington DC, 18-19 October 2004

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Functions of ALRC

• Statutory body established in 1975• Functions: to inquire and report• Projects not self-selected• Terms of reference given by government• Wide variety: 70 reports in 30 years• Carries out investigations independently• Report to Commonwealth Parliament

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Context of ALRC Inquiry• Previous report on genetic

information (ALRC 96, 2003)• Follow on inquiry into gene patents• TOR: Impact of gene patents on

– health care– research & its commercialisation– biotechnology industry

• Duration: Jan 2003 -- 30 June 2004

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Inquiry process

• Advisory committee of experts• Research – national, international• Targeted consultations >70 • Formal written submissions >119• Public consultation documents

– Issues paper 27– Discussion paper 68

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Final Report – ALRC 99

• Released 31 August 2004

• 50 recommendations

• Directed to 17 bodies

• Not self-executing

• Under consideration by government

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Implementation rates

Substantial ImplementationPartial ImplementationNil ImplementationProposals under consideration

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Is there a research use exemptionin Australia?

• Widely assumed to exist

• No express defence in the Patents Act

• Is it implied by definition of ‘exploit’?

• Case law is outdated

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Clarify existence of exemption

Amend Australian Patents Act to create new exemption

– avoids under-investment in research– cleaner IP for researchers – better valuation of patent holder’s IP– no costly litigation

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Scope of exemptionA researcher should be able to use a patented invention to study or experiment on the subject matter of the invention:

– study must be the sole or dominant purpose

– commercial motive does not affect the exemption

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Other attributes of exception• Study & experimentation, not research

• Closer to European model in CPC

• Not limited to gene patents

• Exemption, not a defence

• Any study already permitted under the Patents Act is preserved

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Other ways to facilitate researchLimit the scope of patent rights OR improve the way patented inventions are worked?

– model licence agreements

– industry initiatives (patent pools)

– education programs for researchers

– compulsory licensing (crown use)

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Australian Law Reform Commission

GPO Box 3708Sydney NSW 2001, Australia

Ph: +61-2-8238 6333Fax: +61-2- 8238 6363

Email: patents@alrc.gov.auWebsite: www.alrc.gov.au