Legislative Implementation of Flexibilities - Brazil

Title:	Articles 68-74 of the Industrial Property Law No. 9.279 of 14/05/1996 as last amended by Law No. 10.196 of 14/02/2001
Field of IP:	Patents
Type of flexibility:	Compulsory licenses and government use
Summary table:

Provisions of Law

68. The titleholder shall be subject to having the patent licensed on a compulsory basis if he exercises his rights derived therefrom in an abusive manner, or by means thereof engages in abuse of economic power, proven pursuant to law in an administrative or judicial decision.

(1) The following also occasion a compulsory license:

I. non-exploitation of the object of the patent within the Brazilian territory for failure to manufacture or incomplete manufacture of the product, or also failure to make full use of the patented process, except cases where this is not economically feasible, when importation shall be permitted; or

II. commercialization that does not satisfy the needs of the market.

(2) A license may be requested only by a person having a legitimate interest and having technical and economic capacity to effectively exploit the object of the patent, that shall be destined predominantly for the domestic market, in which case the exception contained in Item I of the previous Paragraph shall be extinguished.

(3) In the case that a compulsory license is granted on the grounds of abuse of economic power, the licensee who proposes local manufacture shall be assured a period, limited to the provisions of Article 74, to import the object of the license, provided that it was introduced onto the market directly by the titleholder or with his consent.

(4) In the case of importation to exploit a patent and in the case of importation as provided for in the preceding Paragraph, third parties shall also be allowed to import a product manufactured according to a process or product patent, provided that it has been introduced onto the market by the titleholder or with his consent.

(5) The compulsory license that is the subject of Paragraph 1 shall only be required when 3 (three) years have elapsed since the patent was granted.

69. A compulsory license shall not be granted if, on the date of the application, the titleholder:

I. justifies the non-use based on legitimate reasons;

II. proves that serious and effective preparations for exploitation have been made;

III. justifies the failure to manufacture or to market on grounds of an obstacle of legal nature.

70. The compulsory license shall also be granted when all the following circumstances apply:

I. there is a situation of dependency of one patent with regard to another;

II. the object of the dependent patent constitutes a substantial technical progress with regard to the earlier patent; and

III. the titleholder fails to reach agreement with the patentholder of the dependent patent on the exploitation of the earlier patent.

(1) For the purposes of this Article, a dependent patent is considered to be a patent whose exploitation necessarily depends on the use of the object of an earlier patent.

(2) For purposes of this Article, a process patent may be considered dependent on the respective product patent, and likewise, a product patent may be dependent on a process patent.

(3) The patentholder licensed pursuant to the provisions of this Article shall have the right to a crossed compulsory license on the dependent patent.

71. In cases of national emergency or of public interest, as declared in an act of the Federal Executive Power, and provided the patentholder or his licensee does not fulfill such need, a temporary and non-exclusive ompulsory license for exploiting the patent may be granted, ex officio, without prejudice to the rights of the respective titleholder.

Sole Paragraph. The act of granting the license shall establish its term and the possibility of extension.

72. Compulsory licenses shall always be granted on a non-exclusive basis, and sublicensing shall not be permitted.