Broad patents

12.20 A specific category of concern relates to what may be described as broad patents—patents that grant broad rights to the patent holder and may be seen as covering applications invented later by someone else.

12.21 Unless widely licensed, broad patents can discourage research and innovation either because researchers will be concerned about breaching existing patents, or because downstream inventors will have to pay licence fees to those whose patents were granted first. In contrast, a narrowly expressed patent may encourage others to ‘work around’ the patent, thereby having less impact on related research. Submissions reflected concern about the impact of broad patents on research.[29]

12.22 When gene patents are described as ‘broad’, the intended meaning may vary. Genetic discoveries often occur from the top down—that is, the discovery of the gene often precedes discovery of its constituent parts, proteins and functions.[30] As a consequence, patents covering an isolated genetic sequence are the most upstream category of gene patent.[31] Concern about the impact of broad gene patents on the conduct of research is most often expressed in relation to these kinds of gene patents.

12.23 Where gene patents contain ‘product per se’ or ‘composition of matter’ claims over isolated genetic materials (such as DNA sequences), the patents may be considered broad because all uses of the product may be covered by the patent. Other gene patents may not claim isolated genetic materials but may nevertheless be considered broad because the claims—for example, over the diagnostic use of a DNA sequence—allow the patent holder, in effect, to assert rights over the DNA sequence itself because any other diagnostic test for the disease specified in the claim would infringe the patent.[32]

12.24 The Nicol–Nielsen Study examined the views of respondents on ‘patent breadth and its impact on innovation’.[33] Seven of 23 research institution respondents, and similar proportions of other categories of respondent, said patent breadth had some negative impact on research.[34] Nicol and Nielsen observed that ‘most respondents were fairly optimistic about their ability to continue research despite the presence of broad patents, and felt that the problem of broad patents was dissipating as patent offices tightened up their examination procedures’.[35]

12.25 In the research context, patents may also be considered ‘broad’ because they cover a generally applicable research technique or resource. Such patents are better referred to as ‘foundational’ inventions because the subject matter may facilitate a wide range of further potential discoveries and inventions.[36] Foundational inventions are discussed below in the context of research tools.

[29] For example, Royal College of Pathologists of Australasia, Submission P26, 1 October 2003; Australian Health Ministers’ Advisory Council, Submission P49, 23 October 2003; Walter and Eliza Hall Institute of Medical Research, Submission P39, 17 October 2003; South Australian Government, Submission P51, 30 October 2003.

[30] Ontario Ministry of Health and Long-Term Care, Genetics, Testing & Gene Patenting: Charting New Territory in Healthcare: Report to the Provinces and Territories (2002), 42.

[31] D Nicol and J Nielsen, ‘The Australian Medical Biotechnology Industry and Access to Intellectual Property: Issues for Patent Law Development’ (2001) 23 Sydney Law Review 347, 359.

[32] See, eg, B Cain, Legal Aspects of Gene Technology (2003), 121–122.

[33] D Nicol and J Nielsen, Patents and Medical Biotechnology: An Empirical Analysis of Issues Facing the Australian Industry (2003) Centre for Law and Genetics Occasional Paper No 6, 86.

[34] Ibid, 87.

[35] Ibid, 89.

[36] See, eg, Organisation for Economic Co-operation and Development, Genetic Inventions, Intellectual Property Rights and Licensing Practices: Evidence and Policies (2002), 12.