UK-IPO asks if research exemption in patent law is too vague


The move follows the very first recommendation of the 2006 Gowers Review of Intellectual Property commissioned by the Treasury.

There is an exemption to the Patents Act for research work, which is designed to ensure that patent law does not get in the way of new discoveries. The UK-IPO, though, has launched a consultation to address what are perceived to be serious uncertainties about the boundaries of that exemption.

The first recommendation of the Gowers review was to "amend section 60(5) of the Patents Act 1977 to clarify the research exemption to facilitate experimentation, innovation and education".

The UK-IPO quoted the Nuffield Council as saying that "the scope of the exemption is unclear" and The Royal Society as saying that Government should clarify the law on research exemptions.

The DTI itself said in a 2004 report that there is "evident uncertainty … about the extent of the patent research exemption, which is widely seen as problematic”, according to the UK-IPO. Many of the reports cited by the UK-IPO also stressed the need for harmonisation of the research exemption laws across Europe.

The consultation will ask participants if the law needs to be clarified, and how it should be done.

It will also ask whether the exemption should be extended to include not just research using a patented invention without permission or fees, but to research which involves the use of a patented invention itself as a research tool. The UK-IPO says that, at the moment, "research tools which are used in, but are not the subject of, an experiment do not fall within the exception".