Newsletter
IPO CONSIDERS REVISING CONDITIONS FOR COMPULSORY LICENSING OF PATENTS
Among the proposed amendments to the Patent Act that the Intellectual Property Office (IPO) is in the course of preparing, the IPO intends to introduce three conditions for it to terminate a compulsory license, whether on the application of the patentee or acting ex officio.
Article 76 Paragraph 7 and Article 77 of the Patent Act as currently in force provide for the termination of a compulsory license only if the reasons for granting the license cease to exist, or if the licensee has acted contrary to the purpose of the license. But the current Act defines no criteria or procedures for termination, and provides no clear monitoring mechanism, so that disputes are likely to arise.
The proposed three new conditions are modeled on Articles 89 and 90 of the Japanese Patent Law. They are : (1) if changes have occurred in the facts that were the basis for a compulsory license being granted (e.g., a state of national emergency has ceased to exist); (2) if the grantee of the compulsory license has not practiced the patent appropriately in accordance with the content of the granted license (e.g., it has manufacturing patented items to supply the demands of a foreign market); and (3) if the grantee of the compulsory licensee has failed to pay compensation in the amount assessed. In any of the above circumstances, the Patent Authority may terminate the compulsory license at the petition of the patentee, or acting ex officio.