Experimental use of patents may be re-invented

One of the legal myths of scientific research -- that using a patented invention is OK as long as that use is only experimental not commercial -- might just become reality later this year.

The federal government's advisory council on intellectual property is considering whether to recommend a change to patent rules, formalising what is currently a shadowy and uncertain area of the law.

"Infringement is defined by way of exploitation," said University of Melbourne law professor Andrew Christie. "It is not clear [under the current legislation] whether an experimental use is an exploitation or whether there is a defence for experimental use."

And no Australian court has yet clarified the situation, either confirming that an exemption for research should be implied into the law, or ruling it out.

The debate over the experimental use exemption was reignited in 2002 by the Madey v Duke case in the US, where a federal court restricted the exemption to non-business purposes, finding Duke University to be infringing a patent it was using for research purposes.

"This is one of the reasons why all of these enquiries going on," said the Dianne Nicol, a senior lecturer in law at the University of Tasmania. "It may still be in practice that [researchers are] not going to get sued but it is less clear."

The government's IP advisory council has noted that there is concern that patent rights may be inhibiting research and development, particularly in biotechnology. It is currently in the midst of a process of industry consultation, and has received around 40 written submissions, mostly in favour of legislating for an experimental use exemption, from healthcare and biotech companies and industry groups.

Nicol said the council had a number of options: from recommending no change to the legislation to recommending experimentation is exempt and precisely defining what the exemption will cover. "One of the options is that [the exemption] would be just for experimentation -- if you're a drug company this might mean you don't have to get a licence for every single bit of research that you do.

"If you look at it from the perspective of the inventor, those sorts of uses are not worth very much until they become commercial. You want people to use your invention and commericalise it further if you are to get licence fees out of it -- encouraging people might be desirable."

Christie said the advisory council may also consider mirroring the patent exemption on the current copyright exemption -- instituting a 'fair use' exemption for research and study.

ACIP will be gathering submissions until February 28, and expects to submit a final report to the federal industry minister Ian Macfarlane in mid-2005. The minister must then decide whether or not to publish the report, or action it.