Introduction

13.1 At present, there is significant legal uncertainty about the existence and scope of any implied experimental use defence to patent infringement in Australia. This chapter examines the law concerning experimental and research use of patented inventions in Australian law and in the law of other jurisdictions, including New Zealand, the United States, Canada, the United Kingdom and other member States of the European Union.

13.2 The chapter examines current practices regarding the experimental and research use of gene patents and the justifications for reform. The ALRC has concluded that experimental use of patented inventions is consistent with important goals of patent law, namely, promoting the attainment of new knowledge and the development of new and improved inventions. For this reason, the law should be amended to make it clear that experimental use of a patented invention does not infringe patent rights.

13.3 The ALRC recommends the enactment of a new experimental use exemption in the Patents Act 1990 (Cth) (Patents Act). An experimental use exemption is recognised in many jurisdictions and applies to all patented subject matter, not just gene patents. However, reform should be limited to protecting experimental use on the subject matter of a patented invention—that is, research with a focus on discovering more about the invention and its properties.

13.4 The terms ‘defence’, ‘exemption’ and ‘exception’ are often used interchangeably in the literature on patents and experimental use. This chapter uses the term experimental use ‘defence’ to refer to any provision that protects against a claim of patent infringement on the basis of experimental use. Further, unless otherwise indicated, the term ‘use’ in this chapter is used in its general sense and does not distinguish ‘use’ from other acts included within the definition of ‘exploit’ in the Patents Act.^[1]