Discussion paper on experimental use exception for New Zealand patents legislation released

The Ministry of Economic Development has just released a Discussion Paper entitled “An Experimental Use Exception for New Zealand’s Patent Legislation”. 

This paper is designed to ascertain whether New Zealand’s patent legislation should contain an explicit experimental use exception.  In part, the paper was driven by concerns over certain biotech patents covering the use of junk DNA owned by the Australian public company, Genetic Technologies Limited, and whether these prevented legitimate experimental research and development work.  However, the paper has a wider concern, namely whether an uncertainty over experimental work (and whether this amounts to patent infringement) may in fact be inhibiting innovation in New Zealand. 

The paper highlights that the law in New Zealand on experimental use is unclear and therefore unsatisfactory and builds on work carried out by the Australian Law Reform Commission (“ALRC”) and the Australian Advisory Council on Intellectual Property (“ACIP”), both of which have recommended that an experimental use exception be incorporated into Australia’s patent legislation. The ACIP’s preferred options for implementing the experimental use exception are also set out and considered. 

The paper also considers the important issue of New Zealand’s international obligations, in particular whether an experimental use exception would be consistent with Article 30 of the TRIPs Agreement.  Article 30 allows members to provide limited exceptions for the exclusive rights conferred by a patent “provided that such exceptions do not unreasonably conflict with the normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties”. 

Submissions on the issue of an experimental use exception can be made up until 7 April 2006.  It is intended that any amendment will be made by way of Supplementary Order Paper to the draft Patents Bill if it cannot be incorporated into the Bill prior to its introduction.  The Ministry of Economic Development’s present aim is to introduce the Patents Bill in late 2006.