26.1 This chapter examines the Crown use and acquisition provisions of the Patents Act 1990 (Cth) (Patents Act). These provisions are an important existing mechanism through which the governments and their agencies may address, in specific cases, concerns that gene patents are hindering research or the provision of healthcare.

26.2 The Crown use provisions allow the Commonwealth or a State[1] either to exploit a patented invention (or an invention that is the subject of a patent application) without infringement, or to authorise another person to do so. The Crown acquisition provisions allow the Commonwealth to acquire compulsorily all rights in a patented invention (or an invention that is the subject of a patent application).

26.3 The Crown use provisions are similar to those relating to compulsory licensing (discussed in Chapter 27) in allowing the exploitation of an invention without the consent of the patent holder or applicant—in effect creating a compulsory licence in favour of the Crown. Like compulsory licensing, the terms of remuneration or compensation are agreed or, in the absence of agreement, determined by a court. However, unlike compulsory licensing, the Crown may invoke the Crown use and acquisition provisions without first seeking agreement of the patent holder. Further, there is no requirement to satisfy a court that the reasonable requirements of the public with respect to the patented invention have not been met.[2]

26.4 For reasons discussed later in this chapter, the Crown use and acquisition provisions seem to be used only rarely. Nevertheless, they constitute an important safeguard in helping ensure that patent protection does not have an adverse impact on significant public interests. In this chapter, the ALRC recommends that policies should be developed about the circumstances in which it is appropriate for government to invoke Crown use or acquisition for the purposes of promoting human health. Minor legislative amendments to clarify the operation of the Crown use provisions are also recommended.

26.5 The Advisory Council on Intellectual Property (ACIP) is currently undertaking a review of the Crown use provisions in patents and designs legislation. ACIP released a Discussion Paper in December 2003 (ACIP Discussion Paper),[3] with a request for written submissions by 20 February 2004. ACIP’s final report is expected late in 2004. Given the ALRC’s own timetable for reporting, it has not been possible to take ACIP’s recommendations into account in formulating the recommendations in this Report, although the ALRC has held discussions with ACIP about the issues raised by their inquiry.

[1] For the purposes of the Crown use provisions, ‘State’ includes the Australian Capital Territory, the Northern Territory and Norfolk Island: Patents Act 1990 (Cth) sch 1.

[2] See Ibid s 133.

[3] Advisory Council on Intellectual Property, Review of Crown Use Provisions in Patents and Designs Legislation (2003).