The patentee's abuse of rights generally takes the following forms:
1. Do not implement the exclusive rights granted by itself, nor allow others to implement them, regardless of public interests and market needs;
2. When the implementation of the latter invention depends on the implementation of the previous patented invention, the previous patentee refuses to allow the latter patentee to implement his previous invention under reasonable conditions.
For the abuse of the former, the Paris Convention stipulated as early as 1883 that compulsory licensing system should not be implemented, and TRIPS and patent laws of various countries have similar provisions. For the latter abuse, TRIPS stipulates the compulsory license of subordinate patents.
The condition for compulsory licensing of subordinate patents is that the invention in the latter invention patent must be truly improved in technology than the invention in the previous invention patent. The purpose of this requirement is to prevent the applicant from filing a patent application for a minor invention, and the purpose is to use compulsory license to implement an important invention. In order to achieve a certain balance between the former invention patentee and the latter invention patentee, the former invention patentee can obtain the compulsory license of the latter invention patent if the latter invention patentee obtains the compulsory license of the former invention patent. An important feature of subordinate patents is that when requesting compulsory license according to the interdependence between invention patents, there is no need to wait for the expiration of any time limit.
To this end, Article 48 of China's Patent Law stipulates: "If a unit with implementation conditions requests the patentee of an invention or utility model to exploit its patent under reasonable conditions, and fails to obtain the license within a reasonable period of time, the patent administration department of the State Council may grant a compulsory license to exploit the invention patent or utility model patent according to the application of the unit." Article 50 of the Patent Law stipulates: "Where an invention or utility model for which a patent right has been obtained is a major technological progress with great economic significance compared with the invention or utility model for which a patent right has been obtained before, and its implementation depends on the implementation of the previous invention or utility model, the patent administration department in the State Council may grant a compulsory license to exploit the previous invention or utility model upon the application of the latter patentee. Where a compulsory license is granted in accordance with the provisions of the preceding paragraph, the patent administration department in the State Council may also grant a compulsory license to exploit the latter invention or utility model upon the application of the former patentee. "
Article 72 of the Detailed Rules for the Implementation of China's Patent Law stipulates that the inventions and creations involved in compulsory license are semiconductor technologies, and the compulsory license is limited to the non-commercial use of public * *, or the use that is identified as anti-competitive behavior by judicial or administrative procedures and given relief. This situation is defined as complying with Article 3 1 (c) of TRIPS.
Obviously, these regulations are designed to prevent the abuse of patent rights.
Before China's entry into WTO, the intellectual property law has been comprehensively reviewed according to TRIPS, and the approval of compulsory license and judicial supervision have been completely consistent with TRIPS. Article 5 1 of China's patent law stipulates: "Units or individuals applying for compulsory license according to the provisions of this law shall provide proof that they have not signed a license contract with the patentee on reasonable conditions." Article 52 stipulates: "The decision to grant compulsory license shall specify the scope and time of implementation according to the reasons for compulsory license." Article 55 stipulates: "If the patentee refuses to accept the decision of the patent administrative department of the State Council on compulsory license, and if the patentee and the unit or individual that obtained the compulsory license refuse to accept the decision of the patent administrative department of the State Council on compulsory license fee, they may bring a suit in a people's court within three months from the date of receiving the notice."
(a) the person who has the right to request a compulsory license
Does this mean that any individual or unit can request and obtain a compulsory license? Or, should there be some conditions for the requester? For example, should the party requesting compulsory license prove to the Patent Office that it can meet the demand for patented products in the local market?
Neither the Paris Convention nor TRIPS talks about this issue, because it is generally believed that it is unlikely that a unit with no capacity at all will make a request for compulsory license. However, TRIPS goes further than the Paris Convention, which requires that "the requesting party must prove that it has tried to reach a license agreement with the invention patentee under reasonable conditions but failed". It should be said that this is of certain positive significance, because it can guide the requester of compulsory license to reach an agreement with the invention patentee. The reason why voluntary license is superior to compulsory license is that the invention patentee is more willing to impart technical secrets to the license beneficiaries according to voluntary license, and technical secrets are very important to ensure the best production and operation of patented products. On the other hand, in the case that the remuneration demanded by the invention patentee is too high, or the patentee refuses to sign a license agreement without reason, the government also reserves sanctions, that is, it can issue a compulsory license.
The above considerations also apply to compulsory licensing based on the interdependence between invention patents. The administrative department for patent in the State Council may also grant a compulsory license to exploit the latter invention or utility model upon the application of the former patentee, but the entity or individual applying for compulsory license shall provide proof that it has not signed a license contract with the patentee on reasonable terms.
(2) The time when the request for non-implementation or compulsory license is made under reasonable conditions.
According to the foregoing, if the remuneration demanded by the invention patentee is too high, or because the patentee refuses to sign a license agreement, there should be measures to limit the patentee's abuse of rights, that is, the state can give a compulsory license. Objectively speaking, due to economic reasons, the invention patentee cannot be required to produce patented products in every country where patents are granted. In other words, even if the invention patentee wants to produce patented products in a specific country, in most cases, it is impossible to do so immediately after filing a patent application or approving an invention patent, because it takes many years of market development for an invention to reach the production stage, and it will take several years to ensure that the patented products will not cause significant economic losses. Generally speaking, the patentee cannot be required to immediately reach a production scale exceeding that produced for experimental purposes.
For these reasons, Article 5 A(4) of the Paris Convention stipulates that within four years from the date of filing a patent application, or within three years from the date of approval of a patent for invention, no request for compulsory license may be filed because it is not implemented or not fully implemented, and the last effective period shall prevail. The term "subject to the final deadline" in the previous sentence means that in practice, when the approval process of the invention patent is less than 1 year, the four-year period after the filing date of the patent application will apply. On the other hand, if the approval process of the invention patent exceeds 1 year, for example, when the law provides for substantive examination of the patent application and adopts the system of delayed examination or objection procedure, the three-year period after the date of approval of the invention patent is applicable.
Article 72 of the Detailed Rules for the Implementation of China's Patent Law stipulates that "after three years from the date when the patent right is granted, any unit may request the patent administrative department of the State Council to grant a compulsory license in accordance with the provisions of Article 48 of the Patent Law", which also refers to this time limit.
(3) Reasonable reasons for non-execution or incomplete execution.
One of the important reasons and conditions for granting compulsory license is that the patentee does not implement or fully implement the patent. However, if the patented invention has actually been fully implemented, or the patentee can prove that the patented invention has not been fully implemented, or it has not been fully implemented, the request for compulsory license must also be rejected. Article 5 A(4) of the Paris Convention stipulates that if the patentee can prove that there are justified reasons for not implementing it, it shall reject the request for compulsory license.
As for what is a "just cause", neither the Paris Convention nor TRIPS has explained it. This shows that it will be stipulated by the laws of various countries. If there are no further specific provisions in national laws, the Patent Office shall determine whether the reasons put forward by the invention patentee are justified according to each specific situation. For example, the following reasons can be considered as legitimate reasons for not implementing or not fully implementing: the factory producing patented products was destroyed by fire or earthquake; Either the government prohibits the production of the patented product or the government does not authorize the sale of the patented product. According to TRIPS, the government can't think that the patentee doesn't implement the patent or doesn't fully implement the patent just because he replaces the local implementation with import. However, the patentee's unwillingness to produce patented products due to economic reasons cannot generally be considered as a legitimate reason.
(4) Compulsory license of public interest
Public interest compulsory license, also known as national interest compulsory license, is a measure taken for public interest. As mentioned above, for the compulsory license that is not implemented or under reasonable conditions, the relevant parties are the invention patentee and another unit or individual that requests the implementation of the patent. With regard to compulsory licensing of public interests or national interests, the parties concerned are the patentee of the invention and the country requesting the exploitation of the patent.
The compulsory license of public interest or national interest is stipulated in order to make it clear that when a patented invention has a significant impact on public interest or national interest, the state should have the right to take direct action for public interest.
Article 49 of China's Patent Law clearly stipulates that in case of national emergency or extraordinary circumstances, or for the purpose of public interest, the patent administration department in the State Council may grant compulsory license to exploit the invention patent or utility model patent.
Generally speaking, the situations in which the state should take direct action for the public interest include:
1. inventions related to national defense
Suppose a foreign patentee holds a patent for the invention of a new weapon in China, and the manufacture of this new weapon in China is very important to China, but the patentee refuses to sign a license agreement with China Company on reasonable terms to manufacture this weapon in China. In this case, the government of China can directly intervene by granting compulsory permission for the public interest.
2. Inventions related to the national economy
If the patented products manufactured in China can promote the development of an important sector of China's economy, but the invention patentee is unwilling to manufacture and sign a license agreement in China, in this case, the China government can also directly intervene by giving public interest compulsory license.
3. Inventions related to public health
Assuming that the use of a new medical device that has been patented in China may be the best way to overcome a certain disease, but the patentee of the invention sells the device at a particularly high price, and the China government can also directly intervene by granting a compulsory license for public interest.
(five) the rights and obligations of the beneficiaries of compulsory license
Whether it is a general compulsory license or a public interest compulsory license, the beneficiary (licensee) has the right to manufacture, use and sell patented products according to the contract. Neither Paris Convention nor TRIPS clearly stipulates whether the beneficiary of compulsory license has the right to import patented products. Generally speaking, although the patentee has the exclusive right to import, if the invention patentee has not imported the patented product, the Patent Office can determine whether the beneficiary of compulsory license should have the right to import the patented product according to the situation. That is, as long as necessary, the patent office should be able to determine that the beneficiary should import patented products to meet the needs of the market.
The main obligations of the beneficiaries of compulsory license are as follows:
1. Pay reasonable fees to the patentee.
The beneficiary of compulsory license is obliged to pay the patentee a reasonable fee, and the amount of the fee is best determined by the agreement signed between the invention patentee and the beneficiary of compulsory license. Article 54 of China's Patent Law clearly stipulates: "A unit or individual that has obtained a compulsory license shall pay a reasonable royalty to the patentee, and the amount shall be negotiated by both parties." If both parties fail to reach an agreement, it shall be decided by the patent administration department of the State Council. "
Why is the amount of fees not always decided by the Patent Office in the decision to approve compulsory license? Because both sides should be allowed to negotiate on imparting technical secrets. Technical secrets are useful for implementing patents, and sometimes indispensable for ensuring the best production of patented products. This kind of negotiation is generally an indispensable part of the negotiation cost. But if the two sides can't agree on the amount of the fee, it can only be decided by the Patent Office.
The compulsory license fee for subordinate patents shall be determined according to the same principle.
2. Compulsory license is non-exclusive.
Compulsory license is non-exclusive, that is, even if the compulsory license is approved, the invention patentee still has the right to manufacture or import the patented product. In addition, the invention patentee still has the right to sign a license agreement with other units or individuals other than the beneficiaries of compulsory license. The non-exclusiveness of compulsory license also means that the approval of compulsory license does not exclude further approval of compulsory license. Article 5 A(4) of the Paris Convention and Article 3 1 (d) of TRIPS clearly stipulate the non-exclusivity of compulsory license due to non-implementation or incomplete implementation. Article 53 of China's Patent Law also stipulates that "a unit or individual that has obtained a compulsory license for exploitation does not have the exclusive right to exploit it, nor does it have the right to allow others to exploit it."
3. Compulsory license is not transferable
Article 5 A(4) of the Paris Convention stipulates that a compulsory license approved because it has not been implemented or fully implemented is not transferable, even in the form of sub-license. However, the Paris Convention allows the following exceptions. If the department that uses compulsory license in one unit is transferred to another unit, the law allows compulsory license to be transferred to the unit together with the department. The provisions of article 3 1 (e) of TRIPS are the same.
Although China's patent law does not clearly stipulate it, it is understood and implemented in practice.
4. The compulsory license shall be terminated in time.
This means that the scope and time of compulsory license should depend on the purpose of granting compulsory license, and once the reasons for granting compulsory license are eliminated, compulsory license should be cancelled.
Take medical devices as an example. When an infectious disease suddenly occurs, it may be necessary to import this equipment soon. If the invention patentee is unwilling to import, or is unwilling to sign an import license agreement under reasonable conditions, the government may decide to require another unit to import this device, or decide to import it itself. Once infectious diseases are under control, there is no reason to keep this measure. The invention patentee may regain the exclusive right to exploit the invention patent.
Article 72 of the detailed rules for the implementation of China's patent law clearly stipulates that the decision to grant compulsory license shall specify the scope and time of implementation according to the reasons for compulsory license. When the reasons for compulsory license are eliminated and no longer exist, the administrative department for patent in the State Council shall, at the request of the patentee, make a decision to terminate the compulsory license after examination. This article also makes the following supplementary provisions on the rights and obligations of the patentee and the beneficiary of compulsory license: the decision of granting compulsory license made by the patent administration department of the State Council mainly restricts the implementation of compulsory license to meet the needs of the domestic market; The invention and creation involved in compulsory license is semiconductor technology, and the implementation of compulsory license is limited to the non-commercial use of the public, or the use is recognized as anti-competitive by judicial or administrative procedures and given relief.
It can be seen that the provisions on compulsory licensing in China's patent law are completely consistent with TRIPS.
The patent system promotes technological innovation and the transfer and dissemination of technology through the economic and legal lever of granting patent rights, so that patentees are generally willing to implement it. Because only by implementing and expanding the scale of implementation can he really benefit from his invention and creation. Therefore, although there are compulsory licenses in TRIPS and patent laws of various countries, in practice, it is rare to approve compulsory licenses and take such measures. This is because the main value of compulsory license lies in its deterrent and dissuasive functions. When the patentee of an invention knows what will happen due to his non-cooperation, he will generally actively cooperate. Since the invention patentee knows best how to get the best result from the invention patent, it is the best way to reach a voluntary license with the invention patentee.