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Legislative Implementation of Flexibilities - Serbia

Title:Articles 63, 65, 66 and 68 of the Patents Law No. 15 of 02/07/2004
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Compulsory Licences

Article 63

If an owner of a patent refuses to license the right of commercial use of a protected invention to other persons or sets unreasonable conditions for such licensing, the authority competent in the field in which the invention shall be employed may, after considering the merits of each individual case, grant a compulsory licence upon application of the interested person:

1) if the patent owner himself or a person authorised by him does not use the protected invention or uses it insufficiently in Serbia and Montenegro;

2) if the commercial use of an invention that has been subsequently protected in the name of another person is not possible, without the use of the protected invention in whole or in part.

The interested person shall be required to prove that he has made efforts, before filing the application referred to in paragraph 1 of this Article, to obtain authorisation from the right holder to use the protected invention on reasonable commercial terms and conditions and that he has not received such authorization within a reasonable period of time.

The interested person, referred to in paragraph 1, item (1) of this Article, may only be a person who proves that he has the appropriate technological capacity and production facilities for the commercial use of the protected invention.

The interested person referred to in paragraph 1, item (2) of this Article may only be the owner of the second invention, provided that:

1) the second invention involves a technical advancement of special economic significance in relation to the invention protected by the first patent; and that

2) the owner of the first patent is entitled, on reasonable terms, to a cross-licence to use the second invention.

Authorisation for the use of the invention protected by first patent shall be non-transferable except with the assignment of the second patent.

Article 65

The scope and duration of a compulsory licence shall be limited to the purpose for which it has been granted.A compulsory licence shall not be exclusive.A compulsory licence may be assigned only with the enterprise or part of the enterprise in which it is used.A compulsory licence shall predominantly be granted for the supply of the domestic market.A compulsory licence may be terminated if and when circumstances that have led to its grant cease to exist and are unlikely to recur. On reasoned request, the competent authority shall re-examine the further existence of such circumstances.An application for the grant of a compulsory licence cannot be filed before the expiry of a period of four years from the filing date of the patent application or three years from the date of the grant of a patent, whichever of the two time limits expires later.A compulsory licence shall not be granted if the patent owner provides valid reasons for non-use or for insufficient use of a protected invention.

Compulsory Licence in the Public Interest

Article 66

The compulsory licence under Article 63 of this Law may also be granted prior to the expiry of the time limit specified in Article 65, paragraph 6, if the exploitation of the protected invention is necessary for the fulfilment of national or other exceptional needs (the protection of public health and nutrition, and the protection of public interests in fields of vital significance for socio economic and technological development) or if the protected invention is used in a manner considered by the competent authority to be contrary to the principles of free competition.

In the event of national or any other exceptional need, the provisions of Article 63, paragraph 2 shall not apply. Nevertheless, the right holder shall be notified of the compulsory licence grant proceedings as soon as possible. In the event of public noncommercial

exploitation of a protected invention, the provisions of Article 63, paragraph 2 shall not apply. However, where the Council of Ministers or the person contracted for such exploitation knows or has grounds to know, without conducting a patent search, that the a valid patent or petty patent shall be exploited or that there is intent for it to be exploited by the government or by any other entity acting on its behalf, the right holder shall be informed of the compulsory licence grant proceedings promptly.

The decision on the application of an interested person for the grant of a compulsory licence in the public interest shall be taken by the Council of Ministers, after it reviews the merits of each individual case.

A compulsory licence may be terminated if and when circumstances that have led to its grant cease to exist and are unlikely to recur. Upon reasoned request, the competent authority shall re-examine the further existence of such circumstances.

In order to rectify an anti-competitive practice, the competent authority may refuse the termination of a compulsory licence in the public interest, if and when circumstances which have led to its grant are likely to recur.

Compulsory Licence Granted to Plant Breeders

Article 68

Where a plant breeder cannot obtain or exploit a plant variety right without infringing a prior patent concerning a biotechnological invention, he may file an application with the competent authority for a non-exclusive compulsory licence for the use of the invention protected by the patent inasmuch as the licence is necessary for the exploitation of the protected plant variety, subject to payment of an appropriate royalty. If such a licence is granted, the owner of the patent shall be entitled to a compulsory cross-licence to use the protected plant variety on reasonable terms.

Where the owner of a patent concerning a biotechnological invention cannot exploit it without infringing a prior plant variety right, he may file an application with the competent authority for a non-exclusive compulsory licence for the use of the plant variety protected by that right, subject to payment of an appropriate royalty. If such a licence is granted, the holder of the variety right will be entitled to a compulsory cross-licence to use the protected biotechnological invention on reasonable terms.

The compulsory license referred to in paragraphs 1 and 2 of this Article can not be exclusive.

An applicant for the compulsory licence referred to in paragraphs 1 and 2 of this Article must prove that:

1) he has unsuccessfully made efforts to obtain a contractual licence;

2) the plant variety or the biotechnological invention constitutes significant technical advance of considerable economic interest compared with the invention claimed in the patent or the protected plant variety.

The compulsory licence referred to in paragraphs 1 and 2 of this Article may only be assigned with the enterprise or part of the enterprise in which it is used.

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