[Ip-health] KWM | IP Australia releases proposed changes to Australia’s patent legislation

James Love james.love at keionline.org
Wed Aug 1 06:59:03 PDT 2018


Australia to modify its compulsory law.

* C
larify that Crown use can be invoked for the provision of a service that
any Commonwealth, State or Territory Government has the primary
responsibility for providing or funding;

*
introduce a ‘public interest’ test for determining whether a compulsory
licence may be granted, replacing the ‘reasonable requirements of the
public’ test which is currently in place and which the Commission found had
been conflated with interests of Australian industry;


http://www.kwm.com/en/au/knowledge/insights/ip-australia-releases-proposed-changes-to-patent-legislation-20180731

Crown Use and Compulsory Licensing

Although addressed separately in the legislation, Crown use and compulsory
licensing provisions both concern broadly similar circumstances in which a
patent owner can be compelled to permit another party to use their patented
invention, in exchange for a licence fee. ‘Crown use’ refers to use by, or
on behalf of, the Australian government, while ‘compulsory licensing’
refers to use by other entities. The Commission found that these provisions
are rarely invoked, and recommended that the legislation should be amended.

With regards to Crown Use, the exposure draft proposes to:

clarify that Crown use can be invoked for the provision of a service that
any Commonwealth, State or Territory Government has the primary
responsibility for providing or funding;
require that governments give notice to a patentee, and first seek a
negotiated arrangement, before invoking the Crown use provisions (except in
an emergency situation); and
require Ministerial authorisation for invoking Crown use, and for the
patent owner to be notified of the reasons for the Minister’s decision.
The proposed provisions concerning compulsory licensing are intended to:

introduce a ‘public interest’ test for determining whether a compulsory
licence may be granted, replacing the ‘reasonable requirements of the
public’ test which is currently in place and which the Commission found had
been conflated with interests of Australian industry;

require a court, when granting a compulsory licence, to consider the public
interest when specifying the terms of the licence, including remuneration;
and

address problems with existing provisions relating to compulsory licensing
of ‘dependant patents’ i.e. those for which access to an earlier ‘original
patent’ is also required, particularly where the owners of the original and
dependent patents may be different.


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