The decision of Dowsett J in Occupational and Medical Innovations Ltd ACN 091 192 871 v Retractable Technologies Inc  FCA 1102, has highlight an apparently significant restriction in the operation of section 125 of the Patents Act.
Section 125 allows a person to apply to a Court for a declaration that the exploitation of an invention would not infringe a claim of a particular complete specification. Section 126 imposes certain preconditions on the making of such an application, including that the Court:
must not make a non-infringement declaration unless a patent has been granted in respect of the relevant invention
Dowsett J held that:
The applicant will be entitled to apply under s 125 if he or she wishes lawfully to exploit the relevant invention. However subs 126(1) provides that no declaration may be made unless and until a patent has been granted for the invention. In my view the patent referred to in subs 126(1) and para 126(1)(c) is that which relates to the invention which the applicant proposes to exploit.
Accordingly, only a patentee wishing to exploit their invention, which falls within the scope of the claims of their patent, may apply to the Court for such a declaration.