Example Improving a product
John has a patent over a pharmaceutical substance for treating diabetes.
Intellectual Property Principles
Some relevant exceptions
As explained in the previous section, generally any unauthorized use or exploitation of a patented invention, product or process is treated as an infringement under Australian law. However, patent law provides for some exceptions to infringement. These exceptions allow someone to use the invention in certain circumstances, without the permission of the patent owner. For your purposes, the most relevant and important exception is the exception for ‘experimental use’.
The experimental use exception permits a person to do an act that would normally infringe a patent, so long as that act is for an ‘experimental purpose’ relating to the invention. The Patents Act lists some things that are considered to be experimental purposes, including:
- Determining the properties of the invention;
- Improving or modifying the invention; and
- Determining the validity of the patent.
Michelle is a medical researcher, and wants to understand what chemical components go into John’s pharmaceutical substance.
The experimental use exception will permit Michelle to:
- run tests to determine the medical components, even if her actions might otherwise violate John’s patent rights;
- run tests and experiments on John’s substance if she thought she could improve the substance to act faster or more efficiently in the body
- Run tests if she suspected that John’s substance actually did not work to treat diabetes, and therefore she might challenge the validity of John’s patent because his invention is actually not useful.
It is important to note that even though the exception would allow Michelle to test the substance to determine its properties or to see if she could improve on the substance, it does not permit her to produce a substance with the same properties and uses as John’s substance, for use and/or sale, until after John’s patent has expired.
To sell a product that is identical to or incorporates John’s substance would be an infringement.
What the exception enables Michelle to do is be ready to launch with her new, improved substance as soon as John’s patent ends, instead of having to wait 20 years before she can even run any tests and experiments.