As part of its policy activities, ACIPA hosted a symposium, "Freedom To Tinker: Patent Law and Scientific Research", on the 19th March 2004. This symposium considered whether Australian patent law should have a defence for research use, and, if so, what its scope should be. It explored the impact of such an exemption upon a number of important industries - such as agriculture, biotechnology, health care, and information technology. It also examined the repercussions of such a defence for universities, research organisations, and educational institutions.

Strikingly, there has a great deal of consensus amongst the government speakers at the symposium. Mr Brian Opeskin discussed the proposals of the Australian Law Reform Commission from the Discussion Paper, Gene Patenting and Human Health. The Commission has proposed that the Australian Government should recognise a defence for experimental and research use to facilitate access to both genetic technologies and stem cell research:

The ALRC has concluded that it is desirable to remove uncertainty about the existence and scope of an experimental use defence in Australian law. Such a reform received broad support in submissions. The existing uncertainty is unhelpful to the research community and commercial organisations. It has the potential to lead to under-investment in basic research and hinder innovation because researchers are concerned that their activities may lead to legal action by patent holders.

The Commission rejects the narrow, procrustean view of the research exemption adopted by the United States Court of Appeals in Madey v Duke University, which held that the defence was limited to actions performed "for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry". It maintains that a statutory defence should be broadly based, and resemble the law of the United Kingdom and other member states of the European Union. It notes: "Moreover, basing a new defence on the European Union model would promote harmonisation of Australian patent law with the law of a major trading bloc, and would give Australian courts the benefit of considering European case law in applying the new provisions".

Mr Doug Waterhouse, the registrar of the Plant Breeders' Rights Office, also supported the introduction of a research exemption in the patent system. He emphasized that a research exemption in relation to plant breeder's rights had been in operation in Australia for the last seventeen years. S 16 of the Plant Breeder's Rights Act 1994 (Cth) provided "any act done in relation to a plant variety covered by plant breeder's rights that is done: (a) privately and for non-commercial purposes; or (b) for experimental purposes; or (c) for the purpose of breeding other plant varieties; does not infringe the plant breeder's rights". Mr Doug Waterhouse maintained that there should be a defence for experimental use in both plant breeder's rights and patent law for reasons of harmony and equivalence.

The other speakers provided an insight into the impact of the research exemption upon particular industries. Mr Geoff Budd, Counsel for the Grains Research and Development Corporation, was supportive of the creation of a research exemption from the perspective of the research and development community. Professor Simon Easteal of the Human Genetics Group at the John Curtin School of Medical Research in the Australian National University, and the Scientific Advisory Committee of Genetic Technologies Limited was not inclined to support a broad based research exemption. He emphasized the need for better licensing practices and digital rights management. Dr Thomas Faunce, a Lecturer at the Faculty of Law and the Medical School of the Australian National University was concerned about the impact of the United States-Australia Free Trade Agreement. Ms Miranda Lee, the Executive Officer of the Australian Digital Alliance discussed the relevance of a research exemption in the field of information technology.

In light of this symposium, ACIPA welcomes the opportunity to make a submission to the Advisory Council on Intellectual Property issues paper, "Patents And Experimental Use". It is concerned that there is great uncertainty whether researchers can rely upon a defence for experimental use. ACIPA recommends that the Commonwealth should amend the Patents Act 1990 (Cth) to establish a new defence to a claim of patent infringement based on the use of a patented invention to study or experiment on the subject matter of the invention; for example, to investigate its properties or improve upon it. The legislation should make it clear that the existence of a commercial purpose or intention does not affect the availability of the defence. ACIPA believes that such a research exemption is in keeping with our international obligations. Indeed, it is of the opinion that a defence for experimental use is compatible both with the TRIPS Agreement of the World Trade Organization and the recently concluded United States-Australia Free Trade Agreement.

ACIPA maintains that a defence for experimental use is a unique policy reform - because it would enable researchers to use a patented invention without either seeking permission from the patent owner or paying royalties. It can be distinguished by these characteristics from a number of other policy options. Thus, licensing, patent pools, and open source licensing depend very much up the patent holder providing permission for an invention to be shared in that way. Furthermore, compulsory licensing can compel a patent holder to give access to patented inventions - but the user is still obliged to pay royalties. Nonetheless, ACIPA observes that a defence for experimental use can be supplemented by additional reforms to patent law. The threshold patent criteria of novelty and inventive step could be tightened, in line with the dissenting judgment of Justice Kirby in Aktiebolaget Hassle v Alphapharm Pty Limited. The compulsory licensing provisions in the Patents Act 1990 (Cth) need to be modernised to reflect contemporary concerns about competition policy. There should be greater use of creative licensing, patent pooling, and open source licensing to share patented technology. However, none of such reforms could be considered to be a substitute for the recognition of a defence of experimental use.