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1 1992

PATENTS ACT, 1992

PART IV

Voluntary and Compulsory Licences

Application for entry in register that licences of right are available.

68. —(1) At any time after the grant of a patent the proprietor of the patent may apply to the Controller for an entry to be made in the register to the effect that licences under the patent are to be available as of right, and where such an application is made, the Controller shall give notice of the application to any person entered on the register as being entitled to an interest in the patent, and if the Controller is satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent he shall make such entry.

(2) Where an entry is made under this section in the register the following provisions shall apply:

(a) any person shall, at any time thereafter, be entitled as of right to a licence under the patent upon such terms as may, in default of agreement, be settled by the Controller on the application of the proprietor or the person requiring the licence,

(b) the Controller may, on the application of the holder of any licence granted under the patent before the entry was made, order the licence to be exchanged for a licence of right upon terms to be settled as aforesaid,

(c) if in proceedings for infringement of the patent (otherwise than by the importation of goods) the defendant undertakes to take a licence upon terms to be settled by the Controller as aforesaid, no injunction shall be granted against him, and the amount (if any) recoverable against him by way of damages shall not exceed double the amount which would have been payable by him as licensee if such a licence had been granted before the earliest infringement,

(d) the renewal fees payable in respect of the patent after the date of entry shall be one half of the renewal fees which would be payable if the entry had not been made.

(3) The licensee under any licence of right granted by virtue of this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to require the proprietor of the patent to take proceedings to prevent any infringement of the patent; and if the proprietor refuses or neglects to comply with a requirement under this subsection within two months after being so required, the licensee may institute proceedings for the infringement in his own name as if he were the proprietor, and in case such proceedings are initiated, the proprietor of the patent shall be made a defendant; provided that a proprietor who is so made a defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

(4) An application for an entry under this section shall contain a statement (to be verified in such manner as may be prescribed) that the proprietor of the patent to which the application relates is not precluded by contract from granting licences under the patent, and the Controller may require from the proprietor such further evidence in this regard as he may think necessary.

(5) All entries in the register under this section shall be published in the Journal and in such other manner (if any) as the Controller thinks desirable for bringing the entry to the notice of the public.

Cancellation of entry.

69. —(1) At any time after an entry has been made under section 68 , the proprietor of a patent may apply to the Controller for cancellation of the entry, and where such an application is made and the balance paid of all renewal fees which would have been payable if the entry had not been made, the Controller may, if satisfied that there is no existing licence under the patent, or that all licensees under the patent have consented to such cancellation, cancel the entry.

(2) If, within the prescribed period after an entry has been made under section 68 , any person claims that the proprietor of the patent concerned is, and was at the time when the entry was made, by a contract in which the claimant is interested precluded from granting licences under the patent, he may apply to the Controller for cancellation of the entry.

(3) Where the Controller is satisfied, on application made under subsection (2), that the proprietor of a patent is and was precluded in the manner mentioned in subsection (2), he shall cancel the entry referred to in that subsection, and thereupon the proprietor shall be liable to pay, within such period as may be prescribed, a sum equal to the balance of all renewal fees which would have been payable if the entry had not been made, and if the sum is not paid within the said period the patent shall cease to have effect on the expiration of the said period.

(4) Where an entry is cancelled under this section, the rights and liabilities of the proprietor of the patent to which the entry relates shall thereafter be the same as if the entry had not been made.

(5) The Controller shall advertise in the prescribed manner any application made to him under this section and within the prescribed period after publication of such advertisement notice of opposition to the cancellation sought may be given to the Controller by—

(a) in the case of an application under subsection (1), any person, and

(b) in the case of an application under subsection (2), the proprietor of the patent to which the application relates.

(6) Where a notice of opposition is given under subsection (5), the Controller shall notify the applicant before determining the application.

Compulsory licences.

70. —(1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on one or more of the grounds specified in subsection (2).

(2) The grounds referred to in subsection (1) are the following:

(a) that the invention which is the subject of the patent, being capable of being commercially worked in the State, is not being commercially worked therein or is not being so worked to the fullest extent that is reasonably practicable;

(b) that a demand in the State for a product which is protected by the patent is not being met, or is not being met on reasonable terms, or is being met to a substantial extent by importation;

(c) that the commercial working in the State of the invention which is the subject of the patent is being prevented or hindered by the importation of a product which is protected by the patent;

(d) that by reason of the refusal of the proprietor to grant a licence or licences on reasonable terms—

(i) a market for the export of a product which is protected by the patent and is manufactured in the State is not being supplied; or

(ii) the working or efficient working in the State of any other invention which is the subject of a patent and which makes a substantial contribution to the art is prevented or hindered; or

(iii) the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;

(e) that by reason of conditions imposed by the proprietor upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, the manufacture, use or sale of materials not protected by the patent or the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;

(f) that a condition which by virtue of section 83 is null and void has been included in a contract in relation to the sale or lease of, or licence to use or work, any product or process protected by the patent.

(3) Subject as hereinafter provided, the Controller may, on an application being made under this section, if satisfied that any of the grounds specified in subsection (2) are established, make an order in accordance with the application, and where the order is for the grant of a licence, it may require the licence to be granted upon such terms as the Controller thinks fit; provided that—

(a) where the application is made on the grounds that the invention which is the subject of the relevant patent is not being commercially worked in the State or is not being worked to the fullest extent that is reasonably practicable, and it appears to the Controller that the time which has elapsed since the grant of the patent has for any reason been insufficient to enable it to be so worked, he may by order adjourn the application for such period as will, in his opinion, give sufficient time for the invention to be so worked;

(b) an order shall not be made under this section for an entry in the register on the ground that a market for the export of the product which is protected by the relevant patent is not being supplied, and any licence granted under this section on that ground shall contain such provisions as appear to the Controller to be expedient for restricting the countries in which the product may be sold or used by the licensee;

(c) no order shall be made under this section in respect of a patent on the ground that the working or efficient working in the State of another invention which is the subject of a patent is prevented or hindered unless the Controller is satisfied that the proprietor of the patent of which the other invention is the subject is able and willing to grant to the proprietor of the patent and his licensees a licence in respect of that other invention on reasonable terms;

(d) any licence granted under this section shall be both non-exclusive and non-transferable;

(e) the terms of any licence so granted may be so framed as to preclude the licensee from importing into the State any goods the importation of which the proprietor of the patent has the right to prevent, and in case the said terms are so framed the proprietor of the patent and all licensees under the patent shall be deemed to have mutually covenanted against such importation;

(f) in settling the terms of any licence granted under this section in respect of a patent which relates to food or medicine the Controller shall endeavour to secure that food and medicine shall be available to the public at the lowest prices consistent with the proprietors of patents deriving reasonable remuneration having regard to the nature of the inventions.

(4) The Controller shall, in determining whether to make an order in pursuance of an application under this section, take account of the following matters, that is to say—

(a) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor or any licensee to make full use of the invention;

(b) the ability of any person to whom a licence would be granted under the order to work the invention to the public advantage; and

(c) the risks to be undertaken by that person in providing capital and working the invention if the application is granted;

but he shall not be required to take account of matters subsequent to the making of the application.

(5) An application under this section may be made by any person notwithstanding the fact that he is already the holder of a licence under the patent, and no person shall be estopped from alleging any of the matters mentioned in subsection (2) by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted such a licence.

(6) Section 68 (3) shall apply to a licence granted in pursuance of an order under this section as it applies to a licence granted by virtue of section 68 .

Provisions as to compulsory licences.

71. —(1) Where the Controller is satisfied, on application made under section 70 , that the manufacture, use or sale of materials not protected by the relevant patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, he may, subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.

(2) Where an application under section 70 is made by a person being the holder of a licence under the relevant patent, the Controller may, if he makes an order under section 70 for the grant of a licence to the applicant, order the existing licence to be cancelled, or may, if he thinks fit, instead of making such an order, order the existing licence to be amended.

Licences, etc. on application of Minister of Government.

72. —(1) At any time after the expiration of the period of three years beginning on the date of the publication of notice of grant of a patent, or such other period as may be prescribed under section 70 (1), any Minister of the Government may apply to the Controller upon any one or more of the grounds specified in section 70 for an entry in the register to the effect that licences under the patent are to be available as of right, or for the grant to any person specified in the application of a licence under the patent, and the Controller may, if satisfied that any of those grounds are established, make an order in accordance with the application.

(2) Sections 70 (3) and 71 shall, so far as applicable, apply in relation to an application and an order made under this section as they apply in relation to an application and an order under section 70 .

Procedure on applications under sections 70 and 72 .

73. —(1) Every application under section 70 or 72 shall specify the nature of the order sought by the applicant and shall contain a statement (to be verified in such manner as may be prescribed) setting out the nature of the applicant's interest (if any) and the facts upon which the application is based.

(2) Where the Controller is satisfied, upon consideration of any application referred to in subsection (1), that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the proprietor of the relevant patent and any other persons appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the Journal.

(3) The proprietor of the relevant patent or any other person desiring to oppose an application referred to in subsection (1) may, within such time as may be prescribed, give to the Controller notice of opposition.

(4) A notice of opposition given under this section shall contain a statement (to be verified in such manner as may be prescribed) setting out the grounds on which the relevant application is opposed.

(5) Where a notice of opposition is duly given under this section, the Controller shall notify the applicant and shall, subject to the provisions of section 74 with respect to arbitration, determine the question.

Appeals and references to arbitrator.

74. —(1) On any appeal from any order made by the Controller in pursuance of an application under section 70 or 72 the Attorney General shall be entitled to appear and be represented.

(2) Where an application is opposed and either—

(a) the parties consent; or

(b) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot, in the opinion of the Controller, conveniently be made before him,

the Controller may at any time order the whole proceedings, or any question or issue of fact arising therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the Controller.

(3) Where the whole proceedings are referred under this section, section 35 of the Arbitration Act, 1954 (which relates to the statement of cases by arbitrators for the decision of the Court), shall not apply to the arbitration; but unless the parties otherwise agree before the award of the arbitrator is made, an appeal to the Court shall lie from the award.

(4) Where a question or issue of fact is referred under this section, the arbitrator shall report his findings to the Controller.

Supplementary provisions as to licences.

75. —(1) Any order under this Act for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

(2) An order may be made on an application under section 70 or 72 for an entry in the register to the effect that licences under the relevant patent are to be available as of right notwithstanding any contract which would have precluded the making of such an entry in respect of the patent on the application of the proprietor of the patent under section 68 , and any such order shall for all purposes have the same effect as an entry made in pursuance of an application under section 68 .

(3) No order shall be made in pursuance of any application under section 70 or 72 which would be at variance with the Treaty establishing the European Economic Community.