Under compulsory licensing, a government grants someone a license under a patent, e.g.to produce a patented product or process, without the consent of the patent holder. The possibility of a compulsory license is included in the WTO’s TRIPS agreement.
The individual or company seeking to use another’s intellectual property may have to pay the patent holder a fee for the license. This is an exception to the general rule that the patent holder enjoys exclusive rights, which he is free (not) to license to others.
On 18 September 2024, the Honourable Justice Jackman, in his capacity as a Deputy President of the Administrative Appeals Tribunal (AAT), granted Sandoz a licence pursuant to section 223(9) of the Patents Act 1990 (Cth) (Act). In doing so, his Honour set aside an earlier, 2019 decision, in which the Commissioner of Patents (Commissioner) had also…
On May 30, 2024, the JPO announced that the request for a decision of granting a compulsory non-exclusive license based on public interest under Article 93 of the Patent Act, which was filed by Vision Care and VC Cell Therapy (the “Claimants”) on July 13, 2021, was withdrawn upon settlement. It took more than two…
In what will be seen as a welcome development to IP owners, the Brazilian Patent Office (BRPTO) is improving the system to record IP agreements. More specifically, on 11 July 2023, the BRPTO published Ordinances 26 and 27/2023, improving the guidelines for registration of technology transfer and franchise agreements. For recordal purposes, complete agreements are…
In September 2021, Brazilian Congress passed a law changing the compulsory licensing landscape as a political answer to the impact of the Covid-19 pandemic. Initially, Congress wanted to include new possibilities to issue compulsory license and tried to create a mandatory tech transfer provision that could severely jeopardize companies doing business in Brazil. In view…
On June 17, 2022, WTO members adopted a waiver to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allowing suspension of patent related to the Covid-19 pandemic, which is the result of a year and a half of intense debate. Already there is a lot of alarm in the industry about this…
The Brazilian President gave his assent to the bill introducing new rules on the compulsory licensing of patents, which facilitates the compulsory licensing of COVID-19 vaccines’ patents. The Brazilian President vetoed, however, certain key provisions of the bill, including paragraphs 8, 9 and 10 of the amended Article 71 of the Brazilian Industrial Property Act…
28 U.S.C § 1498 (a) (Governmental Use) The United States (U.S.) does not have any provisions for a compulsory license. The closest provision that it does have to the licensing of medicines and vaccines is what is called March-in rights. March-in rights allow the U.S. government to grant licenses to patented inventions provided the development…
Legal basis The legal basis for compulsory licenses can be found under the Indian Patent Act, 1970 (Indian Patent Act), Chapter XVI, read with Indian Patent Rules, 2003 (Indian Patent Rules). Requirements for obtaining a compulsory license Compulsory licensing under the Indian Patent Act is well codified and is in line with international agreements. The…
Legal basis The legal basis for compulsory licenses under Singapore patent law is the Patents Act under Chapter 221, Part XI, Section 55 (Patents Act). As of January 1, 2020, Singapore changed its patent system and applications are now required to go through local substantive examination prior to issuance. Requirements for obtaining a Compulsory License…
Legal Basis The legal basis for compulsory licensing in Russia flows from Articles 1360 and 1362 of the Civil Code of the Russian Federation (Civil Code). Article 1360 of the Civil Code allows the Russian Government to grant permission to the use of a patented invention in the interest of defense and national security. Such…
