Productivity Commission on Compulsory Licensing: Draft Report
The Productivity Commission has released its draft Report on Compulsory Licensing of Patents.
There are 10 chapters and 4 appendices.
The main (draft) recommendations at this stage are the repeal of s 133(2)(b), 135 and 136 of the Patents Act. The Productivity Commission also in substance renews the call to repeal s 51(3) of the Competition and Consumer Act.
The primary object to these recommendations is to make the avenue for relief against the restrictive trade practices (antitrust conduct) of a patentee the Competition and Consumer Act 2010 (Cth). The Productivity Commission also recommends that the Competition and Consumer Act 2010 be amended “to explicitly recognise compulsory licensing of a patent as a remedy under that Act.
The Productivity Commission considers that the current requirements under s 135 requiring demonstration that the reasonable requirements of the public are not being met and consideration of the interests of Australian industry to be inconsistent with promoting community-wide welfare.
In its place, the Productivity Commission proposes that a new test be introduced into the Competition and Consumer Act making a compulsory licence available where:
(a) Australian demand for a product or service is not being met on reasonable terms, and access to the patented invention is essential for meeting this demand.
(b) The applicant has tried for a reasonable period, but without success, to obtain access from the patentee on reasonable terms and conditions.
(c) There is a public interest in providing access to the applicant, having regard to:
• costs to the patentee from granting access to the patented invention
• benefits to consumers and the licensee from the licensee’s access to the invention
• longer-term impacts on community wellbeing.
(d) The terms of any compulsory licence order are consistent with public interest, having regard to:
• the right of the patentee to obtain a return on investment commensurate with the regulatory and commercial risks involved
• the right of the public to the efficient exploitation of the invention.
Bearing in mind that there have been very few private actions based on the antitrust or restrictive trade practices provisions and even fewer successful actions (and, for that matter, very few, if any, applications for a compulsory licence under the Patents Act), this new test plainly has the potential to significantly change the nature of a patentee’s rights. That could be very well affected by the interpretation applied to “being met on reasonable terms” in para (a) and “long term impact on community wellbeing” in para (c) and the extent, if any, that the proposed test is applied based on incentives to innovate before the invention is made (ex ante) or after the invention has already been made (ex post).
A change in this balance would appear to be intended as the Productivity Commission is concerned that the existing competition test in s 133 of the Patents Act is triggered only by anti-competitive behaviour where what is needed, according to the Productivity Commission, is a test based on enhancing competition.
If you wish to make a submission, it should be submitted by 8 February 2013 as the Final Report is due to be submitted to Government by 29 March 2013.
So far, there have been 35 submissions.