|Title:||Articles 49-56 of the Patent Law of 01/04/1998, No. 16(1) (Amended in 2000, 2002 and 2006, no text available in English)|
|Field of IP:||Patents|
|Type of flexibility:||Compulsory licenses and government use|
Article 49.-(1) At any time after the expiration of four 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 on one or more of the grounds specified in paragraph (2) below
(a) for a non-voluntary license under the patent,
(b) where the applicant is a government department, for the grant to any person specified in the application of a license under the patent.
(2) The grounds for the submission for non-voluntary license are:
(a) where the patented invention is capable of being commercially worked in Cyprus but it is not being so worked or is not being so worked to the fullest extent that is reasonable practicable;
(b) where the patented invention is a product for which demand in Cyprus
(a) is not being met or
(b) is not being met on reasonable terms or
(c) that by reason of the refusal of the proprietor of the patent to grant a license or licenses on reasonable terms:
(i) a market for the export of any patented product made in Cyprus is not being supplied or
(ii) the working or efficient working in Cyprus 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 Cyprus is unfairly prejudiced;
(d) that by reason of conditions imposed by the proprietor of the patent on the grant of licenses 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 Cyprus is unfairly prejudiced.
(3) Subject to the provisions of paragraphs (4) and (6) below, if the Registrar is satisfied that any of the therein mentioned grounds are established, he may-
(a) where the application is under paragraph (1)(a) above, order the grant of a license to the applicant on such terms as the Registrar thinks fit;
(b) where the application is under paragraph (1)(b) above, order the grant of a license to the person specified in the application on such terms as the Registrar thinks fit.
(4) Where the application is made on the ground that the patented invention is not being commercially worked in Cyprus or is not being so worked to the fullest extent that is reasonably practicable, and it appears to the Registrar that the time which has elapsed since the publication in the Official 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 his opinion give sufficient time for the invention to be so worked.
(5) No entry shall be made in the register under this Article on the ground mentioned in paragraph (2)(c)(i) above, and any license granted under this Article 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 Article in respect of a patent (the patent concerned) on the ground mentioned in paragraph (2)(c)(ii) above 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 concerned and his licensees a license under the patent for the other invention on reasonable terms.
(7) An application may be made under this Article in respect of a patent notwithstanding that the applicant is already the holder of a license under the patent; and no person shall be stopped or barred from alleging any of the matters specified in paragraph (2) above by reason of any admission made by him, whether in such a license or otherwise, or by reason of his having accepted such a license.
Provisions about Licenses under Article 49
Article 50.-(1) Where the Registrar is satisfied, on an application made under Article 49 above in respect of a patent, that the manufacture, use or disposal of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent on the grant of licenses under the patent, or on the disposal or use of the patented product or the use of the patented process, he may (subject to the provisions of that Article) order the grant of licenses under the patent to such customers of the applicant as he thinks fit as well as to the applicant.
(2) Where an application under Article 49 above is made in respect of a patent by a person who holds a license under the patent, the Registrar-
(a) may, if he orders the grant of a license to the applicant, order the existing license to be canceled or
(b) may, instead of ordering the grant of a license to the applicant, order the existing license to be amended.
(3) Where, on an application under Article 49 above in respect of a patent, the Registrar orders the grant of a license, he may direct that the license shall operate-
(a) to deprive the proprietor of the patent of any right he has to work the invention concerned or grant licenses under the patent;
(b) to revoke all existing licenses granted under the patent.
Exercise of Powers on Applications under Article 49
Article 51.-(1) The powers of the Registrar on an application under Article 49 above in respect of a patent shall be exercised with a view to securing the following general purposes:
(a) that inventions which can be worked on a commercial scale in Cyprus and which should in the public interest be so worked shall be worked there without undue delay and to the fullest extent that is reasonably practicable;
(b) that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the invention;
(c) that the interests of any person for the time being working or developing an invention in Cyprus under the protection of a patent shall not be unfairly prejudiced.
(2) Subject to paragraph (1) above, the Registrar shall, in determining whether to make an order or entry in pursuance of such an application, take account of the following matters, that is to say-
(a) the nature of the invention, the time which has elapsed since the publication in the Official Gazette of the Republic of a notice of the grant of the patent and the measures already taken by the proprietor of the patent or any licensee to make full use of the invention;
(b) the ability of any person to whom a license would be granted under the order concerned to work the invention to the public advantage; and
(c) the risks to be undertaken by that person in providing capital and working the invention if the application for an order is granted,
but shall not be required to take account of matters subsequent to the making of the application.
Opposition and Arbitration
Article 52.-(1) The proprietor of the patent concerned or any other person wishing to oppose an application under Articles 49 to 51 above may, in accordance with the rules, give to the Registrar notice of opposition and the Registrar shall consider the opposition in deciding whether to grant the application.
(2) Where an application under Articles 49 to 51 above is opposed under paragraph (1) above 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 Registrar conveniently be made before him,
the Registrar may at any time order the whole proceedings, or any question or issue of fact arising in them, to be referred to an arbitrator or mediator agreed upon by the parties, or in default of agreement, appointed by the Registrar.
(3) Where a question or issue of fact is so referred, the arbitrator or arbiter shall report his findings to the Registrar and the Registrar shall proceed to issue a decision.
Article 53. In any proceedings on an application made in relation to a patent under Articles 49 to 51 above, any statement with respect to any activity in relation to the patented invention, or with respect to the grant or refusal of licenses under the patent, contained in a report of the Commission for Protection against Unfair Competition shall be prima facie evidence of the matters stated.
Special Provisions where Patented Invention Is Being Worked Abroad
Article 54. The import into Cyprus of any product protected by a patent granted by any country member of the World Trade Organization shall be considered as use in Cyprus.
Exploitation by Government or by Third Parties Authorized by Government
Article 55. Where the national security or public safety so requires, the Council of Ministers may authorize, even without the agreement of the proprietor of the patent or the patent application, by notice published in the Official Gazette, a government agency or a person designated in such notice to make, use or sell an invention to which a patent or an application for a patent relates, subject to payment of equitable remuneration to the proprietor of the patent or the application for the patent. The decision of the Council of Ministers with regard to remuneration may be the subject of a recourse to the Court.
Provisions for Non-Voluntary License
Article 56. Where according to Articles 50, 51 and 55 of the present Law a license is given for use of the subject-matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement is waived in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semiconductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;
(f) any such use shall be authorized predominantly for the supply of the domestic market;
(g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The Registrar shall have the authority to review, upon motivated request, the continued existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;
(i) the legal validity of any decision relating to the authorization of such use shall be subject to review by the Court.