‘Experimental use’ clarification to patent law considered

Most of the case law on the subject is in biotechnology and pharmaceuticals

The Ministry of Economic Development is asking for public input on a proposal to amend patent law to clearly permit certain “experimental uses” of an already patented innovation not yet on the market.

The provision would apply to electronics or software that is used in coming up with a new version that itself avoids imitating the originally patented innovation, but makes use of information on how that innovation works. Japanese legislation, for example, explicitly allows such “reverse engineering”.

Such a right is not specifically expressed in current New Zealand law and it is unclear under what circumstances it would exist, particularly if the experiments were to produce a further innovation which is commercially exploited within the life of the original patent.

Most of the case law on the subject is in the field of biotechnology and pharmaceuticals, where it could give a crucial time advantage to know early, for example, whether a procedure or product patented overseas has to be modified to work in a different climate or pass local safety regulations.

Article 27 of the international Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement, to which New Zealand is a signatory, states that patent rights should not differ from one technology to another, so whatever exceptions are eventually enshrined, even if done with a primary eye to biotechnology, would apply to appropriate cases in electronics or software.

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Tags Patent lawministry of development

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