Legislative Implementation of Flexibilities - Israel

Title:Sections 104-107 and 116-126 of the Patent Law no. 5727 of 08/08/1967
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Right of State to exploit invention

104. The Minister may permit the exploitation of an invention by Government departments or by an enterprise or agency of the State, whether a patent for it has or has not already been granted or has or has not already been applied for, if he finds that that is necessary in the interests of the National security or of the maintenance of essential supplies and services.

Right of State to permit exploitation of invention

105. The Minister may, if he finds that that is necessary for the purposes enumerated in section 104, grant a permit under that section to a person who operates under contract with the State, in order to ensure or facilitate the implementation of that contract and for the requirements of the State only.

Notice of Grant of exploitation permit

106. When a permit has been granted under this Article, the Minister shall notify the owner of the invention or the patent holder and the holder of the exclusive license that the permit was granted and the scope of the permitted use, unless National security requires otherwise.

Compensation for restriction of activities

107. If an order was made under section 94 or 99 or if a permit was not granted under section 98 or 103, then the Treasury shall pay to the owner of the invention compensation at the rate set by agreement between the parties or-in the absence of agreement-by the compensation and royalties committee established under section 109.

116. In this Article-"patented product"-a product for which, or for the production process of which a patent was granted;

"patent holder" includes the holder of an exclusive license under the patent.

Power to grant compulsory license

117.-(a) If the Registrar is satisfied that a patent holder abuses his monopoly, then he may grant a license to exploit the invention that is the subject of the patent to a person who applied therefor in the prescribed manner and paid the prescribed fee.

(b) The Registrar shall not entertain an application under this section, unless it was submitted later than three years after the date on which the patent was granted or four years after the date on which the patent application was submitted, whichever is later.

Power to require notification concerning exploitation of patent

118.-(a) At the end of the time said in section 117, the Registrar may demand that a patent holder notify him, within sixty days of the date of the demand, whether he exploits the patented invention in Israel by way of production, and if so, what the extent and the location of the production are.

(b) The Registrar shall demand the notification under this section if he was requested to do so by use of the prescribed form and if the prescribed fee was paid.

(c) If the patent holder does not respond to the demand within 60 days after the date of the demand or within an additional period prescribed by the Registrar, then that shall be deemed an admission on the part of the patent holder that he abuses the monopoly conferred on him by the patent for the invention, in respect of which the notice was sent.

Abuse of monopoly defined

119. The exercise of a monopoly conferred by a patent shall be deemed abusive, if one of the following circumstances exists in respect of the invention, the product or the process which is the subject of the patent, and if the patent holder did not provide a reasonable justification for its existence:

(1) all the demand for the product is not satisfied in Israel on reasonable terms;

(2) the conditions attached by the patent holder to the supply of the product or to the grant of a license for its production or use are not fair under the circumstances of the case, do not take account of the public interest and arise essentially out of the existence of the patent;

(3) exploitation of the invention by way of production in Israel is impossible or restricted by the importation of the product;

(4) the product is not produced in Israel and the patent holder refuses to grant to a local producer a license for its production or use on reasonable terms, neither for the requirements of the local market nor for export purposes;

(5) the patent holder refuses to grant a license for the production of the product or for the use of the process in Israel on reasonable terms and because of that refusal-

(a) the export of a product from Israel is prevented or adversely affected; or

(b) the launching or development in Israel of a commercial or industrial activity is prevented.

Compulsory license for medical purposes

120.-(a) Subject to the provisions of section 122, the Registrar may-if he was requested to do so and if that is necessary in order to give the public a reasonable quantity of medical supplies-grant a license for-

(1) a patented product that can be used as a medicament or for the production of a medicament;

(2) a patented process for the production of a product said in paragraph (1);

(3) a patented device that can be used as a device for medical purposes or as part thereof.

(b) This section shall add to, and not derogate from the powers of the Registrar under section 117.

Compulsory license to exploit earlier patent on which the fate of a later patent depends

121.-(a) If a patented invention (hereafter: later invention) cannot be exploited without infringing an invention, for which the patent application date was earlier (hereafter: earlier invention), then the Registrar may, if so requested by the patent holder of the later invention, grant him a license to exploit the earlier invention to the extent necessary for the exploitation of the later invention, on condition that the later invention serves a different industrial purpose than the earlier one or that it makes a considerable advance over the earlier one.

(b) If the earlier and the later invention serve the same industrial purpose, then a license under subsection (a) shall be granted on condition that the owner of the later invention grant a similar license to the owner of the earlier invention if he so requests.

(c) In the case of a patent application for which priority was claimed under section 10(a), the date of the previous application, within the meaning of section 10(a), shall be deemed the patent application date for purposes of this section.

Factors to be taken into account in granting compulsory license

122. In dealing with an application for a license under section 117 or 120, the Registrar shall also take the following factors into account:

(1) the applicant's ability to remedy the fault, because of which the license was applied for;

(2) the public interest, which generally requires that inventions that can be exploited in Israel by way of production should be so exploited to the greatest extent possible under existing circumstances and without delay;

(3) the right to reasonable remuneration, taking the nature of the invention into account, for exploitation of the patented invention;

(4) protection of the rights of any person who exploits in Israel, by way of production, the invention to which the application for the license relates and of persons engaged in developing that invention;

(5) the nature of the invention, the time elapsed since the patent was granted, and the steps taken by the patent holder or by his representative for the exploitation of the invention in Israel by way of production.

Restriction of scope of compulsory license

123.-(a) A license under this Chapter shall only granted for exploitation of an invention in Israel in the course of production.

(b) A license under this Chapter shall only be granted to a person who is capable of exploiting the invention as said in subsection (a) to a reasonable extent.

(c) Notwithstanding the provisions of this section, when the Registrar grants a license under section 120 he may permit exploitation of the invention also in some other manner, if it is not possible to exploit it by way of production in Israel, or if it is not possible to supply the patented product in this manner to an extent that satisfies demand for it, and if it is necessary to grant the license, so that the public will have a reasonable quantity of medical supplies at reasonable prices.

Invitation to join proceedings on application for compulsory license

124.-(a) As soon as possible after an application for a license under this Chapter was submitted, the Registrar shall-at the applicant's expense-publish a notice in Reshumot that the application was submitted, and in it he shall invite all persons with an interest in the application or likely to be adversely affected by the grant of the license to join the proceedings.

(b) If a person wishes to join the proceeding, then he shall give notice thereof in the prescribed manner and at the prescribed time, and he shall pay the prescribed fee, and when he has done so he shall be deemed an applicant or a respondent in the proceeding, as the case may be.

(c) This section shall add to and not derogate from the provision of section 159.

Effect of compulsory license

125. A compulsory license under this Chapter shall go into effect thirty days after the day of the Registrar's decision or on a later date prescribed by the Registrar; if an appeal was submitted against the decision, then the Court may delay its going into effect or it may attach conditions to its going into effect or to its delay.

Conditions of license

126. A license under this Chapter shall be a non-exclusive license, and the Registrar shall prescribe its conditions when he grants it, including the royalties or other consideration which the licensee shall pay to the patent holder, all as is reasonable and appropriate in the circumstances of the case, and the Registrar shall also prescribe-

(1) circumstances under which the license shall be deemed void or shall be cancelled or its conditions shall be changed;

(2) the ways of determining the amount of the royalties or of the other consideration, when and how they shall be paid;

(3) the ways of marking the product produced under the license.