Background to Patent Infringement
An Australian patent provides to its owner the exclusive rights to exploit a patented invention during the patent term within Australia. The owner has a legal monopoly to make, hire, sell, dispose of (or to offer to do these things), use or import, or to keep for the purpose of doing any of those things, any product that falls within the scope of the claims.
If a third party exploits a patented invention without the consent of the patent owner, then they may be found to have infringed the patent. This has implications for organisations such as universities and research institutes seeking to use a patented technology for research purposes. Australia’s Patents Act (the Act) contemplates this scenario by providing a number of exemptions to patent infringement, including the so-called research or experimental use exemption.
Experimental Use Exemption
The Act was amended in 2012 to codify an experimental use exemption to patent infringement. Section 119C(1) provides that a person may do an act, which would otherwise be considered to infringe a patent, without infringing, providing that the act is done for experimental purposes relating to the subject matter of the invention. Section 119C(2) provides the following non-exhaustive list of examples of “experimental purposes”:
- determining the properties of the invention,
- determining the scope of a claim relating to the invention,
- improving or modifying the invention,
- determining the validity of the patent or of a claim relating to the invention,
- determining whether the patent for the invention would be, or has been, infringed by the doing of an act.
The Explanatory Memorandum that accompanied the experimental use provisions indicates that the term “experimental” should be given its ordinary English meaning, and that the exemption should apply to tests, trials and procedures that a researcher or follow-on inventor undertakes as part of discovering new information testing a principle or supposition.
The Explanatory Memorandum also provides a non-exhaustive list of scenarios in which the provision should apply as long as the specific acts are undertaken for the predominant purpose of gaining new knowledge, or testing a principle or supposition about the invention, or improving an invention, even if the person also had in mind commercialising an improvement to the invention in the future:
- a researcher may be contracted and paid to undertake experiments,
- research may be conducted with a view to ultimately commercialising the end-product of the experimentation, and
- research may be undertaken with, and partially funded by, a commercial partner.
However, the exemption is not intended to apply where the main purpose of the act is to commercialise the invention, to manufacture a product for the purpose of sale or use for commercial purposes, or for market research.
Judicial Consideration of the Experimental Use Exemption
The experimental use exemption was considered by the Federal Court for the first time in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd  FCA 540.
The facts in Jusand
The patents relate to a safety system that is anchored within a bore hole in an underground mine. Briefly, the drill rods used in mining are large, heavy and prone to breakage within the bore holes. Broken drill rods can unexpectedly fall down a bore hole to where miners are working, potentially causing serious injury, fatalities or damage to mine equipment. The safety system absorbs impact from falling broken drill rods within a bore hole.
The patentee, Jusand Nominees Pty Ltd (Jusand), alleged Murray Engineering Pty Ltd (Murray) and other entities infringed its patents by offering to sell, supply or otherwise dispose of a product known as the SafetySpear.
In March 2020, Murray supplied hand-made prototypes of the SafetySpear to an associated corporate entity, mining contractor Byrnecut Australia Pty Ltd (Byrnecut), which conducted a number of “drop tests” on the prototypes at an operational gold mine under specific conditions. The drop tests involved installing a SafetySpear prototype into a bore hole and then intentionally dropping drill rods down the bore holes. These initial tests failed; the prototype SafetySpear was ejected from the bore hole by falling drill rods. A redesigned prototype similarly failed testing in May 2020. For both trials, reports from Murray and Byrnecut speculated as to the cause of the failures and what changes to the prototypes were required. In August 2020, a third prototype was tested by Byrnecut under specific conditions detailed by Murray. This third prototype passed the testing as described in reports by Byrnecut to Murray.
In 2021, Murray sold 200 production model SafetySpears to Byrnecut under a Partnering Agreement. Murray submitted that this sale was for a 12-month trial to establish the properties of the SafetySpear in a real-world environment over an extended period of time. However, the Partnering Agreement made no mention of any “trials” of the SafetySpear, and instead, related to the manufacturing, sales, marketing and distribution of SafetySpears.
Murray submitted that the use of the SafetySpear was for experimental purposes and was therefore exempt from patent infringement under s 119C.
The findings in Jusand
Ultimately, Justice Rofe found that the asserted patent claims were not valid, and that the SafefySpear lacked certain integers of the patent claims. Accordingly, the case for infringement was not established.
Nonetheless, her Honour considered how s 119C should be applied to the facts in the case. As her Honour’s considerations are in obiter, they are not binding; however, they provide useful guidance for other entities that may wish to rely on the experimental use exemption to patent infringement.
Rofe J reviewed the history of experimental use provisions including the Explanatory Memorandum as well foreign case law. Her Honour stated:
“To my mind, the reference to “experimental purposes” connotes at least some application of scientific method to the discovering of new information or testing a principle or supposition, the testing of a hypothesis, the existence of a protocol or methodology documentation of some kind setting out the purpose of the experiment and the variables to be measured or observed, the recording of results or observations, and the reporting of the results or observations.”
Rofe J accepted that the 2020 tests, which involved a limited number of prototype SafetySpears, fell within the experimental use exemption. Those tests were conducted for the purposes of determining whether the prototype SafetySpears worked, and when they failed, for testing the redesigned prototypes. 
In contrast, Byrnecut’s 12-month “testing” of 200 production model SafetySpears at its mines was not found to fall within the experimental use exemption. Relevant to her Honour’s finding was that no further drop tests were carried out at any of the other mines at which the SafetySpear was tested, despite the suggestion that “every mine is different”. Murray did not expect the SafetySpear to fail the trial, since improvements had already been made on the earlier prototypes following the 2020 trials. Further, nothing within the Partnering Agreement suggested that the supply of the SafetySpears was for experimental purposes. The SafetySpears were supplied to Byrnecut at a commercial (not discounted) price that included a sales margin. Moreover, the term of the Agreement was six months, half the life of the purported trials.
Her Honour noted that:
“There was no scientific method associated with the trial of the 200 SafetySpears and no documentation recording the details of the trial existed. No formal instructions about the trial were given to anyone at the Byrnecut mines where the SafetySpears were to be used and the only monitoring of the product was whether any of the installed SafetySpears fell out of the bore hole during the 12 months.”
Rofe J considered that any “experimentation” involved nothing more than an ongoing monitoring program, and that Byrnecut’s 12-month “real world testing” of the SafetySpear was nothing more than use in the ordinary course of mine operations. Her Honour considered that such use does not constitute use for experimental purposes, and accordingly, would not fall within the s 119C exemption.
The Jusand decision provides the following guidance as to the type of activities which may fall under the experimental use exemption to avoid patent infringement:
- The predominant purpose of such activities should be for gaining new knowledge, or testing a principle or supposition about the invention.
- The use need not be solely undertaken for experimental purposes, and instead may be performed with a view to commercialising an improvement. However, the exemption will not apply where the main purpose of the act is to commercialise the invention.
- The activities should utilise at least some scientific method, and should be thoroughly documented, including the purpose of the experiment, protocols, the variables to be measured and the recording and reporting of results.
 Patents Act 1990 (Cth) at s 13
 Patents Act 1990 (Cth) at s 119C, introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
 Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth)
 Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd  FCA 540 at 
 Jusand, above n4 at 
 Jusand, above n4 at 
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