Legislative Implementation of Flexibilities - Zambia

Title:Sections 37-38 and 40-41 of the Patent Act of 1958 (Chapter 400) as last amended by Act No. 26 of 28/12/1987
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Compulsory licence in case of abuse or insufficient use of patent rights

37. (1) Subject to the provisions of subsection (14), any person interested who can show that he has been unable to obtain a licence under a patent on reasonable terms may, after the expiration of a period of three years subsequent to the date on which that patent was sealed or four years subsequent to the date on which the application in respect thereof was lodged, whichever period last expires, apply to the Registrar in the prescribed manner for a compulsory licence on the ground that the reasonable requirements of the public with respect to the invention in question have not been or will not be satisfied.

(2) Every application under this section shall set out fully the nature of the applicant's interest, the facts on which he bases his case and the relief he seeks, and shall be accompanied by an affidavit verifying the facts set out in such application.

(3) If, after consideration of any such application. the Registrar is satisfied that the applicant has a bona fide interest, and that a prima facie case for relief has been made out, he shall direct the applicant to serve copies of the application and of the relevant affidavit upon the patentee and upon any other person appearing from the register to he interested in the patent, and to advertise the application in the prescribed manner.

(4) If the patentee or any other person wishes to oppose the grant of a licence under this section, he may, within the prescribed period or within such further period as the Registrar may on application allow, deliver to the Registrar a counter-statement, verified by affidavit.

setting out fully the grounds on which the application is opposed, and shall at the same time serve upon the applicant copies of the counter-statement.

(5) When, in relation to an application or an opposition thereto, the foregoing provisions of this section have been complied with to the extent therein required, the Registrar shall send all relevant papers to the High Court and that court shall arrange for the matter to be heard in the manner prescribed and. subject to the provisions of this section. the High Court may make such order therein as it deems just.

(6) The reasonable requirements of the public referred to in subsection (1) shall be deemed not to have been satisfied in any of the following circumstances, namely:

(a) if the patented invention, being an invention capable of being worked in Zambia. is not being worked therein on a commercial scale and there is no satisfactory reason for such non-working:

Provided that, if an application for a compulsory licence is made on this ground and the High Court is of the opinion that the time which has elapsed since the sealing of the patent has by reason of the nature of the invention or for any other reason been insufficient to enable the invention to be worked within Zambia on a commercial scale, the High Court may make an order adjourning the hearing of the application for such period as will in its opinion be sufficient for that purpose;

(b) if the working of the invention within Zambia on a commercial scale is being prevented or hindered by the importation of the patented article by the patentee or persons claiming under him, or by persons directly or indirectly purchasing from him or by persons against whom the patentee is not taking or has not taken proceedings for infringement;

(c) if the demand for the patented article in Zambia is not being met to an adequate extent and on reasonable terms;

(d) if by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry of Zambia or the trade of any person or class of persons trading in Zambia, or the establishment of any new trade or industry in Zambia, is being prejudiced, and it is in the public interest that a licence or licences should be granted;

(e) if any trade or industry in Zambia, or any person or class of persons engaged therein, is being prejudiced by unfair conditions attached by the patentee, whether before or after the commencement of this Act, to the purchase, hire, licence or use of the patented article, or the using or working of the patented process;

(f) if any condition which under the provisions of section forty-nine is null and void as being in restraint of trade and contrary to public policy, has been inserted in any contract made in relation to the sale or lease of or any licence to use or work any article or process protected by the patent:

Provided that, for the purpose of determining whether there has been any abuse of the monopoly rights under a patent, due regard shall be had to the fact that patents are granted not only to encourage invention but also to secure that inventions shall so far as possible be worked on a commercial scale in Zambia without undue delay.

Inventions relating to food and certain other commodities

38. (1) Subject to the provisions of subsection (14) of section thirty-seven and without prejudice to the other foregoing provisions of this Act, where a patent is in force in respect of-

(a) a substance capable of being used as food or medicine, or in the production of food or medicine;

(b) a process for producing such a substance as aforesaid; or

(c) any invention capable of being used as or as part of a surgical or curative device;

the High Court shall, on application made to it by any person interested, order the grant to the applicant of a licence under the patent on such terms as it thinks fit unless it appears to the Court that there are good reasons for refusing the application.

(2) In setting the terms of licences under this section, the High Court shall endeavour to secure that food, medicines, and surgical and curative devices shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights.

(3) A licence granted under this section shall entitle the licensee to make, use, exercise and vend the invention as a food or medicine, _or for the purposes of the production of food or medicine or as part of a surgical or curative device, but for no other purposes.

(As amended by Act No. 18 of 1980)

Use of patented inventions for the services of the State

40. (I) Notwithstanding anything in this Act, any Government department or any person authorised in writing by the Minister may make, use or exercise any invention disclosed in any specification lodged at the Patent Office for the service of the State in accordance with the provisions of this section.

(2) If and so far as the invention has, before the effective date of the relevant claim of the completed specification, been duly recorded by or tried by or on behalf of a Government department or a person authorised in terms of subsection (1), otherwise than in consequence of the communication thereof directly or indirectly by the patentee or any person from whom he derives title, any use of the invention by virtue of this, section may be made by such

Government department or person free of any royalty or other payment to the patentee.

(3) If and so far as the invention has not been so recorded or tried as aforesaid, any use of the invention made by virtue of this section at any time after the acceptance of the complete specification in respect of the patent, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Minister and the patentee with the approval of the Minister responsible for finance, or as may in default of agreement be determined by the High Court on a reference

under subsection (I) of section forty-two.

(4) The authority of the Minister in respect of an invention may be given under this section either before or after the patent is granted and either before or after the acts in respect of which the authority is given are done, and may be given to any person, whether or not he is authorised directly or indirectly by the patentee to make, use, exercise or vend the invention.

(5) Where any use of an invention is made by or with the authority of the Minister under this section, then, unless it appears to him that it would be contrary to the public interest so to do, the Minister shall notify the patentee as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.

(6) For the purposes of this section, section forty-one and section forty-two, any use of an invention for the supply to the government of any country outside Zambia, in pursuance of any agreement or arrangement between the Government and the government of that country, of articles required for the defence of that country shall be deemed to be a use of the invention for the services of the State, and the power of a Government department or a person authorised by the Minister under this section to make, use and exercise an invention shall include power-

(a) to sell such articles to the government of any country in pursuance of any such agreement or arrangement as aforesaid; and

(b) to sell to any person any articles made in the exercise of the powers conferred by this section which are no longer required for the purpose for which they were made.

(7) The purchaser of any articles sold in the exercise of powers conferred by this section, and any person claiming through him, shall have power to deal with them in the same manner as if the patent were held on behalf of the President.

(8) The Minister may, by statutory instrument, make regulations governing the rights of third parties in relation to any use of a patented invention, or an invention in respect of which an application for a patent is pending, made for the services of the State in terms of this section or section forty-one.

Special provisions as to State use during emergency

41. (1) For the purposes of this section, the expression "period of emergency" means any period beginning on such date as may be declared by the Minister by statutory notice to be the commencement, and ending on such date as may be so declared to be the termination, of a period of emergency.

(2) During any period of emergency the powers exercisable in relation to an invention by a Government department or a person authorised by the Minister under section forty, shall include power to make, use, exercise and vend the invention for any purpose which appears to the Minister necessary or expedient-

(a) for the efficient prosecution of any war in which the Republic may be engaged;

(b) for the maintenance of supplies and services essential to the life of the community;

(c) for securing a sufficiency of supplies and services essential to the well-being of the community;

(d) for promoting the productivity of industry, commerce and agriculture;

(e) for fostering and directing exports and reducing imports or imports of any classes, from all or any countries and for redressing the balance of trade;

(j) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or

(g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any part of Her Britannic' Majesty's dominions or any foreign countries that are in grave distress as the result of war;

and any reference in that section or in section forty-two to the services of the State shall be construed as including a reference to the purposes aforesaid.

(As amended by C.N. No. 185 of 1964 and S.l. No. 175 of 1965)