An exemption to Australian patent infringement is proposed where the predominant purpose of the relevant act is to gain new knowledge, or to test a principle or supposition regarding a patented invention. Further, the exemption is to apply irrespective of whether the person undertaking the relevant act had in mind to later commercialise, for example, an improvement arising from the act, or whether that person was aware of the patent at the time the relevant act was undertaken.
Presently, the Australian patents legislation does not provide for an infringement exemption for experimental use of a claimed invention, and the common law that applies in the relevant circumstances is uncertain.
According to the proposal, a person may undertake an act that would otherwise be an infringement of a patent claim ‘if the act is done for experimental purposes relating to the subject matter of the invention’.
‘Experimental purposes’ is non-exhaustively defined as including:
Interestingly, it is proposed that an act that improves or modifies an invention would be exempted from infringement, even if the improvement or modification was proposed for later commercialisation.
Further, the amendment proposes that the experimental activities be ‘related to’ the subject matter of the invention. The intention here is to achieve two outcomes:
Acts that remain outside the proposed infringement exemption include those where the purpose is commercialisation. These include:
For further information on these developments, the Exposure Draft of the Explanatory Memorandum for the Bill can be found on the IP Australia website.1
This article was written by Emma Lees, Patent Scientist and Tom Gumley, Partner, Freehills Patent Attorneys.