Legislative Implementation of Flexibilities - Ireland

Title:Sections 70-78 of the Patent Act No. 1 of 27/02/1992, as last amended by Law No. 31 of 2006
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

70.- (1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on any or all of the following grounds:

(a) that-

(i) a demand in the State for the subject matter of the patent is not being met or is not being met on reasonable terms, or

(ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the World Trade Organisation;

(b) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced.

(2) If an invention protected by a patent (in this section referred to as 'the second patent') cannot be exploited in the State without infringing rights deriving from another patent (in this section referred to as 'the first patent') the proprietor of the second patent may apply to the Controller for a licence under the first patent to the extent necessary for the exploitation of the invention concerned, provided that such invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent.

(3) Where an application is made under this section, if the Controller is satisfied:

(a) that any of the grounds specified in subsection (1) are established, or

(b) that an invention protected by a patent cannot be exploited without infringing rights deriving from the first patent as referred to in subsection (2),

the Controller may make an order in accordance with the application and, where the order is for the grant of a licence, the order may require the licence to be granted upon such terms as the Controller thinks fit, provided that:

(i) any licence granted shall be non-exclusive;

(ii) any licence granted shall be predominantly for the supply of the market in the State;

(iii) any licence granted may only be assigned with the prior authorisation of the Controller and with that part of the enterprise or goodwill which uses the patented invention and, in the case of a licence granted on an application under subsection (2) in respect of the first patent, the licence may only be assigned by the proprietor of the second patent in conjunction with the assignment of the second patent;

(iv) a licence shall only be granted subject to the payment to the proprietor of the patent of adequate remuneration in the circumstances of the case, taking into account the economic value of the licence;

(v) the scope and duration of the licence shall be limited to the purpose for which it is granted;

(vi) any licence granted on an application under subsection (1) in respect of a patent which relates to semi-conductor technology shall only be for public non-commercial use;

(vii) no order shall be made on an application under subsection (2) unless the proprietor of the second patent is able and willing to grant the proprietor of the first patent and the licensee of that proprietor a cross-licence, on reasonable terms, to use the invention claimed in the second patent.

(4) The Controller shall, in determining whether to make an order pursuant to an application under this section, take account of the following matters, namely-

(a) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor or any licensee to make full use of the invention,

(b) the ability of any person to whom a licence would be granted under the order to exploit the patent to the public advantage, and

(c) the risks to be undertaken by that person in providing capital and exploiting the patent if the application is granted.

(5) Section 68(3) shall apply to a licence granted pursuant to an order under this section as it applies to a licence granted by virtue of section 68.".

71.- (1) Where an order for the grant of a licence or for an entry in the register has been made pursuant to an application under section 70, any person may apply to the Controller to amend or cancel the order on the grounds that the circumstances which led to the order have changed or have ceased to exist and are unlikely to recur.

(2) Where the Controller is satisfied that the circumstances referred to in subsection (1) have changed or have ceased to exist and are unlikely to recur, the Controller may order the amendment or cancellation of the existing order upon such terms as the Controller thinks fit, including, in particular, terms which provide for the protection of the interests of the licensee concerned.

(3) Section 73 shall, in so far as it is applicable, apply in relation to an application under subsection (1).

(4) Where, following an application under subsection (1), an order is amended, subsections (1), (2) and (3) shall, in so far as they are applicable, apply in relation to the order so amended.

72.-

(1) At any time after the expiration of the period of three years beginning on the date of the publication of notice of grant of a patent, or such other period as may be prescribed under section 70(1), any Minister of the Government may apply to the Controller upon any one or more of the grounds specified in section 70 for an entry in the register to the effect that licences under the patent are to be available as of right, or for the grant to any person specified in the application of a licence under the patent, and the Controller may, if satisfied that any of those grounds are established, make an order in accordance with the application.

(2) Sections 70(3) and 71 shall, so far as applicable, apply in relation to an application and an order made under this section as they apply in relation to an application and an order under section 70.

73.-

(1) Every application under section 70 or 72 shall specify the nature of the order sought by the applicant and shall contain a statement (to be verified in such manner as may be prescribed) setting out the nature of the applicant's interest (if any) and the facts upon which the application is based and shall be accompanied by evidence indicating that the applicant sought to obtain a licence from the proprietor of the patent but has been unable to obtain such a licence on reasonable terms and within a reasonable time.

(1A) The Controller may, when so requested by the applicant, dispense with the evidence referred to in subsection (1)-

(a) where there exists a national emergency or other circumstances of extreme urgency, or

(b) in the case of an application for a licence for public non-commercial use:

Provided that the proprietor of the relevant patent has been informed as soon as reasonably practicable of the intention of the applicant to apply to the Controller for a licence under the patent.

(2) Where the Controller is satisfied, upon consideration of any application referred to in subsection (1), that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the proprietor of the relevant patent and any other persons appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the Journal.

(3) The proprietor of the relevant patent or any other person desiring to oppose an application referred to in subsection (1) may, within such time as may be prescribed, give to the Controller notice of opposition.

(4) A notice of opposition given under this section shall contain a statement (to be verified in such manner as may be prescribed) setting out the grounds on which the relevant application is opposed.

(5) Where a notice of opposition is duly given under this section, the Controller shall notify the applicant and shall, subject to the provisions of section 74 with respect to arbitration, determine the question.

74.-

(1) On any appeal from any order made by the Controller in pursuance of an application under section 70, 71 or 72 the Attorney General shall be entitled to appear and be represented.

(2) Where an application is opposed and either:

(a) the parties consent; or

(b) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot, in the opinion of the Controller, conveniently be made before him,

the Controller may at any time order the whole proceedings, or any question or issue of fact arising therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the Controller.

(3) Where the whole proceedings are referred under this section, section 35 of the Arbitration Act, 1954 (which relates to the statement of cases by arbitrators for the decision of the Court), shall not apply to the arbitration; but unless the parties otherwise agree before the award of the arbitrator is made, an appeal to the Court shall lie from the award.

(4) Where a question or issue of fact is referred under this section, the arbitrator shall report his findings to the Controller.

75.-

(1) Any order under this Act for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

(2) An order may be made on an application under section 70 or 72 for an entry in the register to the effect that licences under the relevant patent are to be available as of right notwithstanding any contract which would have precluded the making of such an entry in respect of the patent on the application of the proprietor of the patent under section 68, and any such order shall for all purposes have the same effect as an entry made in pursuance of an application under section 68.

(3) No order shall be made in pursuance of any application under section 70, 71 or 72 which would be at variance with the Treaty establishing the European Economic Community or with the TRIPs Agreement.

PART V

Use of Inventions for the Service of the State

76.-

(1) Any inventor, or any applicant for or proprietor of a patent, may (either for or without valuable consideration) make to a Minister of the Government, and such Minister may take on behalf of the State, an assignment of the whole of or any share or interest in the benefit of an invention, of a patent application therefor, or of any patent obtained or to be obtained therefor, and where a Minister of the Government takes any such assignment, such Minister may do, or, as may be appropriate, join in doing, on behalf of the State, all or any of the following things, that is to say-

(a) develop and perfect such invention,

(b) form or promote an incorporated company or an unincorporated association of persons to develop and perfect such invention,

(c) sell or lease any such patent application or patent or grant licences under any such application or patent on such terms as he shall, with the agreement of the Minister for Finance, think proper,

(d) form or promote an incorporated company or an unincorporated association of persons to work commercially any such invention,

(e) do all such things as may be necessary for the maintenance or preservation of any such application or patent or be otherwise incidental to the ownership thereof.

(2) Every Minister of the Government shall, before the 1st day of April in every year, lay before each House of the Oireachtas a report of every (if any) exercise by him during the year ending on the previous 31st day of December of the several powers conferred on him by paragraph (c) or (d) of subsection (1) and also, if and so far as he considers it to be in the public interest, of any or all of the powers conferred by paragraph (a), (b) or (e) of subsection (1).

(3) All expenses incurred by a Minister of the Government under this section shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.

77.-

(1) A patent and a patent application shall have to all intents the like effect as against the State as it has against an individual; provided that any Minister of the Government may, by himself or by such of his officers, servants or agents as may be authorized in writing by him or by any other person acting on his behalf at any time after the making of an application for a patent, do for the service of the State any of the following acts in the State in relation to an invention which is the subject of the application or patent, without the consent of the applicant for or the proprietor of the patent, that is to say-

(a) where the invention is a product, make, use, import or stock the product or dispose of or sell or offer to dispose of or sell it to any person;

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

(c) supply or offer to supply to any person any of the means, relating to an essential element of that invention, for putting the invention into effect.

(2) Anything done by virtue of subsection (1) in relation to an invention which is the subject of an application or a patent, is subsequently in this section and in section 78 referred to as "use of the invention" and the doing of any such thing shall not amount to an infringement of the application or patent concerned.

(3) Use of an invention under this section shall be subject to such terms as may, either before or after the use thereof, be agreed on, with the approval of the Minister for Finance, by any Minister of the Government and the applicant for or the proprietor of the patent relating to the invention, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between such applicant or proprietor and any person other than a Minister of the Government shall not operate to prevent or regulate the use of the invention for the service of the State.

(4) Where an invention which is the subject of any patent or application for a patent has, before the date of filing, or, where priority is claimed, the priority date of the application, been duly recorded in a document by, or been tried by or on behalf of any Minister of the Government (such invention not having been communicated directly or indirectly by the applicant for or the proprietor of the relevant patent), any Minister of the Government or such of his officers, servants or agents as may be authorized in writing by him, may use the invention so recorded or tried for the service of the State free of any royalty or other payment to the applicant for or the proprietor of the patent, notwithstanding the existence of the application or patent, and, if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of such applicant or proprietor or to any independent expert mutually agreed upon.

(5) Where any use of an invention is made by or with the authority of a Minister of the Government under this section, then, unless it appears to such Minister that it would be contrary to the public interest so to do, the Minister shall notify the applicant for or the proprietor of a patent (if any) relating to the invention 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 reasonably require.

(6) In the case of any dispute as to or in connection with the use of an invention under this section or the terms therefor, or as to the existence or scope of any record or trial referred to in subsection (4), the matter shall be referred to the Court for decision, and the Court shall have the power to refer the whole matter or any question or issue of fact arising thereon to be heard by an arbitrator upon such conditions as it may direct; the Court or arbitrator in settling the dispute shall be entitled to take into consideration any benefit or compensation which the applicant for or proprietor of a patent (if any) relating to the invention or any other person interested in such application or in such patent may have received directly or indirectly from the State in respect of such application or patent.

(7) In any proceedings under this section the Minister of the Government who is a party to the proceedings may-

(a) put in issue the validity of the relevant patent without applying for its revocation;

(b) if the proprietor of a patent is a party to the proceedings, apply for revocation of the patent upon any ground upon which a patent may be revoked under section 58.

(8) The right to use an invention for the service of the State under the provisions of this section shall include a power to dispose of or sell, or offer to dispose of or sell, any products made in pursuance of such right which are no longer required for the service of the State.

(9) Any person who acquires products disposed of or sold in the exercise of powers conferred by this section and any person claiming through him shall have power to deal with the products in the same manner as if they had been made pursuant to a patent held on behalf of the State.

(10) In this section "service of the State" means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority for the purposes of the Local Government Act, 1941.

78.-

(1) During any period when an order under subsection (2)(a) is in force the power exercisable in relation to an invention by a Minister of the Government, or a person authorized by a Minister of the Government under section 77, shall include power to use the invention for any purpose which appears to such Minister to be necessary or expedient-

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

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

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

(d) 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;

(e) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory other than the State that is in grave distress; or

(f) for ensuring the public safety and the preservation of the State.

(2) (a) Where the Government are of opinion that, owing to the existence of exceptional circumstances, it is desirable in the interests of the community that a power conferred by subsection (1) shall be available, they may by order declare that the power shall be available.

(b) Where an order under paragraph (a) of this subsection is for the time being in force and the Government are of the opinion that the exceptional circumstances referred to in that paragraph no longer exist, they shall by order revoke the first-mentioned order.