Aussie Commission Recommends Experimental Use Infringement Exemption

The Australian Advisory Council on Intellectual Property (ACIP) has released its report on Patents and Experimental Use which reccommends a patent infringement exception for
"Acts done for experimental purposes relating to the subject matter of the invention" which include:

• determining how the invention works;
• determining the scope of the invention;
• determining the validity of the claims; and
• seeking an improvement to the invention.

According to the report,

Under current Australian law it is not clear whether experimental acts regarding
a patented invention constitute infringement, due to an absence of both statute and case law on the subject. The greatest need expressed in submissions was for Australian law to be clarified so that both patent owners and non-owners alike would have certaintyregarding their activities. Current practice in Australia appears to be that many researchers are largely unaware of patent laws or deliberately disregard them. Correspondingly, there appears to be a convention in Australian industry, at least until recently, of not pursuing possible infringements for experimental purposes.

Although there is some anecdotal evidence, there is no strong empirical evidence that the current situation is adversely affecting the balance between the incentives
to innovate and the ability to use innovations for research and development. However, ACIP considers that this situation will change. There is evidence that more assertive IP practices are developing in Australia. Without clarification of the law, this would increase inefficiencies and lost opportunities. Also, new case law may determine the category of allowable uses of a patented invention to be very narrow. ACIP therefore considers that, if an experimental use provision can be drafted into patent legislation which prevents a damaging situation without introducing an even
greater set of costs, then it should be introduced.

The Advisory Coucil is an independent body appointed by the government, and advises the Federal Minister for Industry, Tourism and Resources on intellectual property matters and the strategic administration of IP Australia. The Council was established in 1994. The Council's membership reflects a cross section of industry involved with the intellectual property system, and includes individuals from both large and small businesses, the legal and attorney professions and academia.