Patent quips: Edited by Wayne Condon

By Wayne Condon.

Key Points:

Experimental use exception in New Zealand

On 7 July 2006, the New Zealand Cabinet announced that it had approved a proposal to allow an experimental use exception to patent infringement in New Zealand. The New Zealand Government expressed the view that without such an exception, innovation in New Zealand may be inhibited.

The proposed exception will be based on a recommendation made by the Australian Advisory Council on Intellectual Property which has been considering the same issues in respect of Australia. Consequently, the exemption will be in the following form:

The rights of a patentee are not infringed by acts done for experimental purposes relating to the subject matter of the invention that do not unreasonably conflict with the normal exploitation of a patent.

Acts done for experimental purposes relating to the subject matter of the invention include:

• determining how the invention works
• determining the scope of the invention
• determining the validity of the claims
• seeking an improvement to the invention.

The enactment of an experimental use exception to patent infringement in New Zealand which mirrors that likely to be enacted in Australia is clearly consistent with the broad intention of the Australian and New Zealand governments to attempt to harmonise the intellectual property laws of Australia and New Zealand, so far as it is practical to do so.

Lipitor prevails in the UK

Late last month the UK Court of Appeal handed down its decision in Ranbaxy's challenge to Pfizer's Lipitor patents.[1] In essence the decision prevents Ranbaxy from being able to launch a generic atorvastatin product in the UK until 2011. Interestingly, however, the enantiomer patent was confirmed by the UK Court of Appeal to be invalid. Ranbaxy is also challenging Pfizer's Lipitor patents in Australia. We will report in more detail on the UK Court of Appeal's decision in a forthcoming issue of Life Sciences Insights.