Addressing the Effects of Genetic Patents and Research
Adding a Research Exemption to the Patents Act
41. In many countries, non-commercial research involving a patented invention will not infringe a patent. This exemption from infringement is known as a "research" or "experimental use" exemption. A research exemption may allow some researchers to carry out research on patented genetic material without having to obtain licences from the patent owners.
42. In some countries such as New Zealand, Australia and the United States, the exemption arises from judicial interpretation of the patent legislation. Other countries have a specific research exemption in their patents legislation. For example, s60(5)(b) of the United Kingdom Patents Act 1977 provides that acts "done for experimental purposes relating to the subject matter of the invention" do not constitute infringement of a patent. The United Kingdom courts have ruled that some commercial research may fall within this exemption.
43. However, not all research uses will fall within the research exemption. In New Zealand, research carried out in order to derive a commercial advantage might not be considered by the courts to be "experimental use".10 This may mean that research conducted by non-profit organisations such as universities may not fall within the research exemption if the research is later commercialised, or is carried out with the intention of developing a commercial product.
Comment
44. A clearly defined research exemption could be added to the Patents Act. If one is to be introduced, it will be desirable to clearly define the circumstances in which it may be used, to provide some degree of certainty for researchers and patent owners as to just when the exemption applies. Any such exemption would have to be consistent with New Zealand's obligations under the TRIPS Agreement, in particular Article 30.11
45. The ALRC has proposed that the Australian Patents Act be amended (proposal 14.1):
… to establish a new defence to a claim of patent infringement based on the use of a patented invention to study or experiment on the subject matter of the invention; for example, to investigate its properties or improve upon it. The legislation should make it clear that the existence of a commercial purpose or intention does not affect the availability of the defence.
46. We recommend that such an amendment should be considered for New Zealand's patent legislation. It should be noted that a research exemption would apply to all patented inventions, rather than simply patented genetic material. Further work needs to be carried out to determine the feasibility of such an exemption.
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