Legislative Implementation of Flexibilities - Australia

Title:Sections 133, 135 and 163, 167 and 168 of the Patent Act No. 83 of 30/10/1990 as last amended by Law No. 106 of 2006
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

133 - Compulsory licences

(1) Subject to subsection (1A), a person may apply to the Federal Court, after the end of the prescribed period, for an order requiring the patentee to grant the applicant a licence to work the patented invention.

(1A) A person cannot apply for an order in respect of an innovation patent unless the patent has been certified.

(2) After hearing the application, the court may, subject to this section, make the order if satisfied that:

(a) all the following conditions exist:

(i) the applicant has tried for a reasonable period, but without success, to obtain from the patentee an authorisation to work the invention on reasonable terms and conditions;

(ii) the reasonable requirements of the public with respect to the patented invention have not been satisfied;

(iii) the patentee has given no satisfactory reason for failing to exploit the patent; or

(b) the patentee has contravened, or is contravening, Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act) in connection with the patent.

(3) An order must direct that the licence:

(a) is not to give the licensee, or a person authorised by the licensee, the exclusive right to work the patented invention; and

(b) is to be assignable only in connection with an enterprise or goodwill in connection with which the licence is used;

and may direct that the licence is to be granted on any other terms specified in the order.

(3B) If the patented invention cannot be worked by the applicant without his or her infringing another patent:

(a) the court is to make the order only if the court is further satisfied that the patented invention involves an important technical advance of considerable economic significance on the invention (other invention) to which the other patent relates; and

(b) the court must further order that the patentee of the other invention:

(i) must grant to the applicant a licence to work the other invention insofar as is necessary to work the patented invention; and

(ii) is to be granted, if he or she so requires, a cross-licence on reasonable terms to work the patented invention; and

(c) the court must direct that the licence granted by the patentee of the other invention may be assigned by the applicant:

(i) only if he or she assigns the licence granted in respect of the patented invention; and

(ii) only to the assignee of that licence.

(4) An order operates, without prejudice to any other method of enforcement, as if it were embodied in a deed granting a licence and executed by the patentee and all other necessary parties.

(5) The patentee is to be paid in respect of a licence granted to the applicant under an order:

(a) such amount as is agreed between the patentee and the applicant; or

(b) if paragraph (a) does not apply - such amount as is determined by the Federal Court to be just and reasonable having regard to the economic value of the licence and the desirability of discouraging contraventions of Part IV of the Trade Practices Act 1974 or an application law (as defined in section 150A of that Act).

(6) The patentee or the Federal Court may revoke the licence if:

(a) the patentee and the licensee are agreed, or the court on application made by either party finds, that the circumstances that justified the grant of the licence have ceased to exist and are unlikely to recur; and

(b) the legitimate interests of the licensee are not likely to be adversely affected by the revocation.

135 - Reasonable requirements of the public

(1) For the purposes of sections 133 and 134, the reasonable requirements of the public with respect to a patented invention are to be taken not to have been satisfied if:

(a) an existing trade or industry in Australia, or the establishment of a new trade or industry in Australia, is unfairly prejudiced, or the demand in Australia for the patented product, or for a product resulting from the patented process, is not reasonably met, because of the patentee's failure:

(i) to manufacture the patented product to an adequate extent, and supply it on reasonable terms; or

(ii) to manufacture, to an adequate extent, a part of the patented product that is necessary for the efficient working of the product, and supply the part on reasonable terms; or

(iii) to carry on the patented process to a reasonable extent; or

(iv) to grant licences on reasonable terms; or

(b) a trade or industry in Australia is unfairly prejudiced by the conditions attached by the patentee (whether before or after the commencing day) to the purchase, hire or use of the patented product, the use or working of the patented process; or

(c) if the patented invention is not being worked in Australia on a commercial scale, but is capable of being worked in Australia.

(2) If, where paragraph (1)(c) applies, the court is satisfied that the time that has elapsed since the patent was sealed has, because of the nature of the invention or some other cause, been insufficient to enable the invention to be worked in Australia on a commercial scale, the court may adjourn the hearing of the application for the period that the court thinks sufficient for that purpose.

163 - Exploitation of inventions by Crown

(1) Where, at any time after a patent application has been made, the invention concerned is exploited by the Commonwealth or a State (or by a person authorised in writing by the Commonwealth or a State) for the services of the Commonwealth or the State, the exploitation is not an infringement:

(a) if the application is pending - of the nominated person's rights in the invention; or

(b) if a patent has been granted for the invention - of the patent.

(2) A person may be authorised for the purposes of subsection (1):

(a) before or after any act for which the authorisation is given has been done; and

(b) before or after a patent has been granted for the invention; and

(c) even if the person is directly or indirectly authorised by the nominated person or patentee to exploit the invention.

(3) Subject to section 168, an invention is taken for the purposes of this Part to be exploited for services of the Commonwealth or of a State if the exploitation of the invention is necessary for the proper provision of those services within Australia.

167 - Sale of products

(1) The right to exploit an invention under subsection 163(1) includes the right to sell products made in exercise of that right.

(2) Where under subsection 163(1) the sale of products is not an infringement of:

(a) a patent; or

(b) a nominated person's rights in the products;

the buyer, and any person claiming through the buyer, is entitled to deal with the products as if the relevant authority were the patentee or the nominated person.

168 - Supply of products by Commonwealth to foreign countries

Where the Commonwealth has made an agreement with a foreign country to supply to that country products required for the defence of the country:

(a) the use of a product or process by the Commonwealth, or by a person authorised in writing by the Commonwealth, for the supply of that product is to be taken, for the purposes of this Chapter, to be use of the product or process by the Commonwealth for the services of the Commonwealth; and

(b) the Commonwealth or the authorised person may sell those products to the country under the agreement; and

(c) the Commonwealth or the authorised person may sell to any person any of the products that are not required for the purpose for which they were made.