Australian I/P Law Revisions Allow Springboarding

The Australian Intellectual Property Laws Amendment Bill 2006 was passed by the Senate on September 14, 2006 and is expected to be implement with Royal Assent from the Governor General has in a few days.

Beginning 28 days after Royal Assent, the bill will reportedly allow "springboarding" as an exception to patent infringement on any pharmaceutical patent at any time for purposes solely in connection with gaining regulatory approval of a pharmaceutical product in Australia or another territory. Prior to these amendments, the Patents Act contained a limited provision that only allowed springboarding on pharmaceutical patents after they had received an extension of patent term. This amendment aims to bring Australia’s springboarding provisions closer to those of competitor countries and improve the environment for generic pharmaceutical companies conducting research and development in Australia.

The Bill amends the prior user defence in the Patents Act to clarify that the prior user’s rights include exploiting the product, method or process, that the prior use be only in Australia and that the prior use right may be assigned but not licensed. This amendment reaffirms the Government’s commitment to ensuring that the legitimate interests of third parties are not compromised by the grant of a patent. However, this amended provision only applies to patents granted as a result of applications filed on or after commencement of the amendment.

The Bill also amends the Patents Act to allow for exemplary damages to be awarded by a court in patent infringement actions, for example, in the case of flagrant or wilful infringement of a patent. The amendments only apply to infringements of patents occurring on or after the commencement of the Schedule.