PATENTS AND EXPERIMENTAL USE

Patents and experimental use

A couple of days ago the IPKat posted a note on a book on employee inventors' rights published by the Intellectual Property Institute . A second recent publication of the IPI is also in the IPKat's possession: it's A European Perspective as to the Extent to Which Experimental Use, and Certain Other Defences to Patent Infringement, Apply to Differing Types of Research. This report was prepared for the Institute by the IPKat's friend, the greatly-revered Bird & Bird partner Trevor Cook.

The IPI says:

"In recent years the application of the statutory experimental use defence to patent infringement in the UK and the rest of Europe to "research tool patents" and "gene patents" has been the subject of controversy. At the same time the USA, lacking such a defence, has been exploring the extent to which its regulatory review defence for medicinal products can extend back into early stage research, culminating in a decision last year of the Supreme Court. Against this background Australia and Canada have been investigating introducing their own statutory experimental use defences. The present study considers the extent to which the statutory experimental use defence in the UK and the rest of Europe applies to research away from the context of late stage trials for medicinal and other regulated products in which all the case law has developed, and considers whether, and to what extent, legislative change might be appropriate".

The IPKat says: This is an impressively thorough and well-informed piece of work. It follows a report published by the IPI on behalf of the UK's Department of Trade and Industry on the law and practice regarding patents for genetic sequences. The great attribute of this book is the manner in which it assimilates and organises the past and present thinking on the subject. Experimental use, like any other controversial IP topic, is fraught with issues of balance, since the extent to which a patent holder can restrict or control experimental use of its own patented subject matter is the same extent to which other patent owners can interfere with its own freedom of research activity.

By the same author: "Responding to Concerns About the Scope of the Defence From Patent Infringement for Acts Done for Experimental Purposes Relating to the Subject-Matter of the Invention" [2006] 2 Intellectual Property Quarterly 193-222. This article was published in the same week as the book. Merpel notes that the IPQ is published in cahoots with the Institute, whose name and logo appear on its front cover.

Bibliographic data: Publication date, August 2006. Paperback, 148 (large A4-sized) pages. £60 plus postage and packaging. Rupture factor - small. Must-read bits: (i) the very clear account of the evolution of the US doctrine and (ii) the summary and conclusions.