Question J – Answer

You have a granted patent in the United States and in Australia on using GUSPlus, a very sensitive detection system for identifying transformed plants.  A couple of colleagues of yours are working at an Australian non-profit research institute and another is working at Cornell University in the United States, and they want to use the GUSPlus system for research purposes to identify transgenic plants. They can:

Answer: 3

“use it only if they get a license or some other form of permission from you”

Why? One of the patent rights allows the owner to exclude others from using an invention. In both the United States and in Australia, there is no express exception in the patent laws for research use of a patented invention, even in non-profit or educational institutions. Thus, your colleagues are infringing your patent rights by using your protected invention for research purposes without your consent. As a result, there is a need to obtain a license or permission from the patent owner to use a protected invention for research purposes.

Some countries (not the USA and Australia) allow the use of a patented invention for educational or non-commercial research purposes or even certain commercial purposes, such as clinical trials directed at commercialisation.  In some countries, there is a distinction between research on the invention and research using the invention. Research on the invention refers to use of the invention with the aim of improving it. The contribution of new aspects to the invention is in line with patent policy, which is to foster innovation. On the other hand, research using the invention implies a use for the exact purpose for which it was created and protected. In this case, there is no innovation purpose, and the user would be undermining the rights of the patent owner by denying the revenue him/her would normally get for the commercialization of his/her invention.

In reality, non-profit research institutions are rarely approached by patent owners regarding non-allowed uses of their invention, but there is a danger in adhering to “research-only” use of technology even in countries where there is a research exemption.  The owner of the patent can stop or restrict commercialisation or even trials directed at commercialisation, despite the years and funding sunk into the research.

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