Legislative Implementation of Flexibilities - Saint Lucia

Title:Sections 51-52, 57-59 and 61 of the Patents Act No. 16 of 27/08/2001
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Compulsory licences

51.- (1) At any time after the expiration of three years, or of such other period as may be prescribed, from the date of the grant of a patent, any person may apply to the Registrar -

(a) for a licence under the patent;

(b) for an entry to be made in the register to the effect that licences under the patent are to be available as of right; or

(c) where the applicant is a Government department, for the grant to any person specified in the application of a licence under the patent;

if it appears at the time such application is filed, one or more of the grounds specified in subsection (2) are met.

(2) The grounds referred to in subsection (1) are -

(a) that there is no production of the patented product or application of the patented process in Saint Lucia without any legitimate reason;

(b) that there is no product produced in Saint Lucia under the patent for sale in Saint Lucia or there are some but they are sold at unreasonably high prices or do not meet the public demand without any legitimate reason;

(c) that by reason of the refusal of the proprietor of the patent to grant a licence or licences on reasonable terms -

(i) a market for the export of any patented product made in Saint Lucia is not being supplied;

(ii) the working or efficient working in Saint Lucia of any other patented invention which makes a substantial contribution to the art is prevented or hindered; or

(iii) the establishment or development of commercial or industrial activities in Saint Lucia is unfairly prejudiced; and

(d) that by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in Saint Lucia, is unfairly prejudiced.(3) Subject to subsections (4) to (6), if the Registrar is satisfied that any of those grounds under subsection (2) are established, the Registrar may -

(a) where the application is made pursuant to subsection (1) (a), order the grant of a licence to the applicant on such terms, including the transfer of know-how associated with the patented invention, as the Registrar thinks fit;

(4) Where -

(a) an application is made on the ground that there is no production of the patented product or application of the patented process in Saint Lucia; or

(b) there is insufficient or no product produced under the patent for sale in Saint Lucia; and it appears to the Registrar that the time which has elapsed since the publication in the Gazette of a notice of the grant of the patent has for any reason been insufficient to enable the invention to be so worked, the Registrar may by order adjourn the application for such period as will in the Registrar's opinion give sufficient item for the invention to be so worked.

(5) No entry shall be made in the register under this section on the ground mentioned in subsection (2) © (i), and any licence granted under this section on that ground shall contain such provisions as appear to the Registrar to be expedient for restricting the countries in which any product concerned may be disposed of or used by the licensee.

(6) No order or entry shall be made under this section in respect of a patent on the ground mentioned in subsection (2) © (ii) unless the Registrar is satisfied that the proprietor of the patent for the other invention is able and willing to grant to the proprietor of the patent and his or her licensees a licence under the patent for the other invention on reasonable terms.

(7) An application may be made under this section in respect of a patent notwithstanding that the applicant is already the holder of a licence under the patent, and no person shall be stopped or barred from alleging any of the matters specified in subsection (2) by reason of any admission made by him or her, whether in such a licence or otherwise, or by reason of his or her having accepted such a licence.

Inventions relating to food or medicine or surgical or curative device

52.- (1) At any time after the date of the grant of a patent 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 any substance mentioned in paragraph (a); or

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

the Registrar may, on application made to him or her by any person, order the grant to the applicant of a licence under the patent on such terms as the Registrar thinks fit, unless it appears to the Registrar that there are good reasons for refusing the application.

(2) A licence granted under this section shall entitle the licensee to make, use or dispose of the invention as a food or medicine, or for the purpose of the production of food or medicine or as part of a surgical or curative device.

(3) An application under this section may be made notwithstanding that the applicant is already the holder of a licence under the patent.

(4) A licence granted under this section and section 51 may permit the licensee to import the patented product.

Use of patented inventions for services of Government

57. - (1) Notwithstanding anything in this Act, any Government department and any person authorised in writing by a Government department may, for the services of the Government and in accordance with this section, do any of the following acts in Saint Lucia in relation to a patented invention without the consent of the proprietor of the patent -

(a) where the invention is a product, may -

(i) make, use, import, obtain or keep the product, or sell or offer to sell it where to do so would be incidental or ancillary to making, using, importing, obtaining or keeping it; or

(ii) in any event, sell or offer to sell it for foreign defence purposes or for the production or supply of any drug and medicine, or dispose or offer to dispose of it for any purpose whatever;

(b) where the invention is a process, may use it or, in relation to any product obtained directly by means of the process, do anything mentioned in paragraph (a);

(c) without prejudice to paragraphs (a) and (b), where the invention or any product obtained directly by means of the invention is a drug or medicine, may sell or offer to sell the drug or medicine;

(d) may supply or offer to supply to any person any of the means, relating to an essential element of the invention, for putting the invention into effect;

(e) may dispose or offer to dispose of anything which was made, used, imported, obtained or kept in the exercise of the powers conferred by this section and which is no longer required for the purpose for which it was made, used, imported, obtained or kept, as the case may be;

and anything done by virtue of this subsection shall not amount to an infringement of the patent.

(2) Any act done in relation to an invention by virtue of this section is in this section referred to as use of the invention; and "use", in relation to an invention, in sections 58 to 60 shall be construed accordingly.

(3) So far as the invention has before its priority date been duly recorded by or tried by or on behalf of a Government department otherwise than in consequence of a relevant communication made in confidence, any use of the invention by virtue of this section may be

made free of any royalty or other payment to the proprietor.

(4) So far as the invention has not been so recorded or tried, any use of it made by virtue of this section at any time either -

(a) after the publication of the application for the patent for the invention; or

(b) without prejudice to paragraph (a), in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence; shall be made on such terms as may be agreed either before or after the use by the Government department and the proprietor of the patent or as may in default of agreement be referred to an arbitrator agreed on by the parties or, in default of agreement, appointed by the Registrar.

(5) The arbitrator to whom any reference is made under subsection (4) shall report his or her findings to the Registrar.

(6) The expenses of and incidental to an arbitrator under subsection (4) shall, in default of agreement between the parties, be borne equally by the parties to the reference.

(7) Where an invention is used by virtue of this section at any time after publication of an application for a patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) include terms as to payment for the use, then, notwithstanding anything in those terms, any such payment shall be recoverable only -

(a) after such a patent is granted; and

(b) if, apart from this section, the use would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent but also the claims, as interpreted by the description or claims, in the form in which they were contained in the application immediately before the preparations for its publication were completed by the

Registry.

(8) The authority of a Government department 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 use in respect of which the authority is given is made, and may be given to any person whether or

not he or she is authorised, directly or indirectly, by the proprietor of the patent to do anything in relation to the invention.

(9) Where any use of an invention is made by or with the authority of a Government department under this section, then, unless it appears to the department that it would be contrary to the public interest to do so, the department shall notify the proprietor of the patent as soon as practicable after the second of the following events, that is to say, the use is begun and the patent is granted, and furnish him or her with such information as to the extent of the use as he or she may from time to time require.

(10) A person acquiring anything disposed of in the exercise of the powers conferred by this section, and any person claiming through him or her, may deal with it in the same manner as if the patent were held on behalf of the Government.

(11) In determining under this section any dispute between a Government department and any person as to the terms for the use of an invention for the services of the Government, the arbitrator shall have regard -

(a) to any benefit or compensation which that person or any person from whom he or she derives title may have received or may be entitled to receive, directly or indirectly, from any Government department in respect of the invention; and

(b) to whether that person or any person from whom he or she derives title has in the arbitrator's opinion without reasonable cause failed to comply with a request of the department to use the invention for the services of the Government on reasonable terms.

(12) On a reference under this section, the arbitrator may refuse to grant relief by way of compensation in respect of the use of an invention for the services of the Government during any further period specified under section 32(3), but before the payment of the renewal fee

and any additional fee prescribed for the purposes of that section.

(13) Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the arbitrator shall not grant relief by way of compensation under this section in respect of any such use before the decision to allow the amendment unless the Registrar is satisfied that the specification of the patent as published was framed in good faith and with reasonable skill and knowledge.

(14) In considering the amount of any compensation for the use of an invention for the services of the Government after publication of an application for a patent for the invention and before such a patent is granted, the arbitrator shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 23, that a patent would be granted conferring on the proprietor of the patent protection for an act of the same description as that found to constitute that use, and if the arbitrator finds that it would not have been reasonable, he or she shall reduce the compensation to such amount as he or she thinks just.

(15) Where, by virtue of a transaction, instrument or event to which section 39 applies, a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent, the new proprietor or licensee, and a Government department or a person authorised by a

Government department subsequently makes use of the patented invention under this section, the new proprietor or licensee shall not be entitled to any compensation under subsection (4), as it stands or as modified by section 59 (3), in respect of a subsequent use of the invention before the transaction, instrument or event is registered unless -

(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or

(b) the Registrar is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.

(16) In this section, "relevant communication", in relation to an invention, means a communication of the invention, directly or indirectly, by the proprietor of the patent or any person from whom he or she derives title.

(17) Subsection (4) is without prejudice to any rule of law relating to the confidentiality of information.

Interpretation, etc., of provisions about Government use

58.- (1) Any reference in section 57 to a patented invention, in relation to any time, is a reference to an invention for which a patent has before that time been, or is subsequently, granted.

(2) In this Part, unless the context otherwise requires, "the services of the Government" includes -

(a) the supply of anything for foreign defence purposes;

(b) the production or supply of drugs and medicines required for the provision of pharmaceutical, medical or dental services in any prescribed dispensary, hospital or other medical institution maintained by or on behalf of the Government and in any dispensary, hospital or medical institution which the Minister may specify by notification in the Gazette; and

(c) such purposes relating to the production or use of atomic energy or research into matters connected therewith as the Minister thinks necessary or expedient;

and "use for the services of the Government" shall be construed accordingly.

(3) In subsection (2) (a) and section 57 (1) (a), references to a sale or supply of anything for foreign defence purposes are references to a sale or supply of the thing -

(a) to the government of any country outside Saint Lucia pursuant to an agreement or arrangement between the Government and the government of that country, where the thing is required for the defence of that country, where the thing is required for the defence of that country or of any other country whose government is party to any agreement or arrangement with the Government in respect of defence matters; or

(b) to the United Nations, or to the government of any country belonging to that organisation, pursuant to an agreement or arrangement between the Government and that organisation or government of the country belonging to that organisation, where the thing is required for any armed forces operating pursuant to a resolution of that organisation or any organ of that organisation.

Rights of third parties in respect of Government use

59.- (1) In relation to -

(a) any use made for the services of the Government of an invention by a Government department, or a person authorised by a Government department, by virtue of section 57; or

(c) anything done for the services of the Government to the order of a Government department by the proprietor of a patent in respect of a patented invention or by the proprietor of an application in respect of an invention for which an application for a patent has been filed and is still pending; the provisions of any licence, assignment or agreement to which this subsection applies shall be of no effect so far as those provisions restrict or regulate the working of the invention, or the use of any model, document or information relating to it, or provide for the making of payments in respect of, or calculated by reference to, such working or use, and the reproduction or publication of any model or document in connection with the said working or use shall not be deemed to be an infringement of any copyright or design right subsisting in the model or document.

(2) Subsection (1) shall apply to any licence, assignment or agreement which is made, whether before or after the commencement date, between, on the one hand, any person who is a proprietor of or an applicant for the patent, or anyone who derives title from any such person or from whom such person derives title, and, on the other hand, any person other than a Government department.

(3) Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the working of the invention is in force under the patent or application, then -

(a) in relation to anything done in respect of the invention which, but for this section and section 57, would constitute an infringement of the rights of the licensee, section 57 (4) shall have effect as if for the reference to the proprietor of the patent there were substituted a reference to the licensee; and

(b) in relation to anything done in respect of the invention by the licensee by virtue of an authority given under section 57, that section shall have effect as if section 57( 4) were omitted.

(4) Subject to subsection (3), where a patent, or the right to the grant of a patent, has been assigned to the proprietor of the patent or application in consideration of royalties or other benefits determined by reference to the working of the invention, then -

(a) in relation to any use of the invention by virtue of section 57, subsection (4) of that section shall have effect as if the reference to the proprietor of the patent included a reference to the assignor, and any sum payable by virtue of that subsection shall be divided between the proprietor of the patent or application and the assignor in such proportion as may be agreed on by them or as may in default of agreement be determined by the court on a reference under section 57; and

(b) in relation to any act done in respect of the invention for the services of the Government by the proprietor of the patent or application to the order of a Government department, section 57 (4) shall have effect as if the act was use made by virtue of an authority given under that section.

(5) Where section 57 (4) applies to any use of an invention and a person holds an exclusive licence under the patent or application, other than such a licence as is mentioned in subsection (3) authorising him or her to work the invention, then subsections (7) and (8) shall apply.

(6) In subsections (7) and (8), "the section 57 (4) payment" means such payment, if any, as the proprietor of the patent or application and the Government department agree under section 57, or the arbitrator determines under that section, should be made by the department to the proprietor in respect of the use of the invention.

(7) The licensee shall be entitled to recover from the proprietor of the patent or application such part, if any, of the section 57 (4) payment as may be agreed on by them or as may, in default of agreement, be determined by the court under section 57 to be just having regard to any expenditure incurred by the licensee -

(a) in developing the invention; or

(b) in making payments to the proprietor in consideration of the licence, other than royalties or other payments determined by reference to the use of the invention.

(8) Any agreement by the proprietor of the patent or application and the Government department under section 57 (4) as to the amount of the section 57 (4) payment shall be of no effect unless the licensee consents to the agreement; and any determination by the arbitrator under section 57 (4) as to the amount of that payment shall be of no effect unless the licensee has been informed of the reference to the arbitrator and is given an opportunity to be heard.

(9) Where any model, document or information relating to an invention is used in connection with -

(a) any use of the invention which falls within subsection (1) (a); or

(b) with anything done in respect of the invention which falls within subsection (1) (b);

section 57 (4) shall, whether or not it applies to any such use of the invention, apply to the use of the model, document or information as if for the reference in it to the proprietor of the a patent there was substituted a reference to the person entitled to the benefit of any provision of an agreement which is rendered in operative by this section in relation to that use, and in section 57 the references to terms for the use of an invention shall be construed accordingly.

(10) Nothing in this section shall be construed as authorising the disclosure to a Government department or any other person of any model, document or information to the use of which this section applies in contravention of any such licence, assignment or agreement as is mentioned in this section.

Special provisions as to Government use during emergency

61.- (1) During any period of emergency within the meaning of this section, the powers exercisable in relation to an invention by a Government department or a person authorised by a Government department under section 57 shall include power to use the invention for any purpose which appears to the department necessary or expedient -

(a) for the efficient prosecution of any war in which Saint Lucia 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 class, from all or any countries and for redressing the balance of trade;

(f) 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 country or territory outside Saint Lucia which is in grave distress as a result of a war;

and any reference in this Act to the services of the Government shall, in respect of any period of emergency, include a reference to those purposes.

(2) In this section, "the use of an invention" includes, in addition to any act constituting such use by virtue of section 57, any act which would, apart from that section and this section, amount to an infringement of the patent or, as the case may be, give rise to a right under section 72 to bring proceedings in respect of the application, and any reference in this Act to "use for the services of the Government" shall, as respects any period of emergency, be construed accordingly.

(3) In this section, "period of emergency" means any period beginning with such date as may be declared by the Minister by order published in the Gazette to be the commencement, and ending with such date as may be so declared to be the termination, of a period of emergency for the purposes of this section.