April 5, 2023
A “compulsory” or “non-voluntary” license is, in essence, an authorization provided by a public body to a third party under national law to use the subject matter of a patent where the right holder has not agreed to such use. Such licenses may be granted by a competent national authority, which may be a court, on specified grounds and under specific circumstances and conditions, as set forth in the national law in compliance with applicable international rules.
Despite being available in a large number of jurisdictions, compulsory licenses are rarely applied for or granted, and there is therefore little jurisprudence across the world addressing the conditions governing this exceptional mechanism in the patent system.
Join the next WIPO Webinar for Judges to learn from the insights and experiences of Justice Klaus Bacher (Federal Court of Justice, Germany), Justice Prathiba M. Singh, (Delhi High Court, India), and Federal Judge Caroline Tauk (Regional Federal Court of the Second Region, Rio de Janeiro, Brazil), for an interactive webinar exploring issues such as:
The webinar will be conducted on May 11, 2023 (14.00 – 15.15 CEST, find your local time) in English, with simultaneous interpretation in Arabic, Chinese, French, Portuguese, Russian and Spanish. Participation is open only to judges and members of quasi-judicial bodies that are active in adjudicating intellectual property disputes.
Please register in order to participate in the webinar. Registration will be open until 18.00 on May 8, 2023 (CEST). For any questions, contact the WIPO Judicial Institute at email@example.com.
In general, once granted, a patent confers on its owner the exclusive rights to prevent third parties from commercial exploitation of the patented invention without the owner’s authorization, during the term of protection and within the territory where patent has effect. A patent owner has also the right to conclude licensing contracts in respect of the patented invention. These licenses are considered as “voluntary” licenses.
While the granting of exclusive patent rights is considered as an incentive for investment in innovative activities and the production of knowledge, allowing the enjoyment of the full scope of the exclusive rights in all circumstances may not always meet the ultimate goal of the patent system to enhance the public welfare. Therefore, in order to strike the right balance between the interests of the right holders, third parties and the public, the international legal framework for IP accords to each country the right to enact certain exceptions and limitations to the patent rights (Paris Convention for the Protection of Industrial Property, Art. 5A and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, Art. 30, 31 and 31bis).
Such exceptions and limitations are determined by each country according to its own socio-economic conditions and priorities, and therefore vary from one country to another. In general, however, the national legislation of many countries provides for compulsory licensing and/or government use as one of these exceptions and limitations.
Under certain circumstances and conditions determined by the applicable national law, a “compulsory” or “non-voluntary” license may be granted by a competent national authority to a third party allowing the exploitation of the patented invention during the patent term without the authorization of the patentee. In effect, a court or other competent authority grants a specific permission to a person or entity other than the right holder to produce, use, sell or import the patent-protected product, or use the patent-protected process, if the grounds specified by national law allows for the granting of such permission, and the necessary terms and conditions are met.
In general, provisions on compulsory licenses are considered as an instrument to safeguard public interest, prevent abuses of the patent rights, such as failure to work the patented invention, remedy anti-competitive practices, to ensure national security and to respond to national emergencies.
Unlike other exceptions to patent rights, a patent owner remains entitled to adequate remuneration for use of the patented invention that is authorized by a compulsory license. Reasonable procedural safeguards, including an effective appeal procedure, should be established to ensure that non-voluntary licenses are properly granted and executed.