Generally, the patentee abuses his rights in the following forms:
1. He neither implements the exclusive right granted by himself, nor allows others to implement it, 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 on reasonable terms.
As early as 1883, the Paris Convention stipulated that compulsory licensing system should not be implemented, and there are similar provisions in TRIPS and patent laws of other countries. For the latter abuse, TRIPS provides for compulsory licensing of dependent patents.
The condition for compulsory licensing of dependent patents is that the invention in the latter invention patent must be truly improved in technology compared with 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, if the latter invention patentee obtains a compulsory license for the previous invention patent, the former invention patentee can obtain a compulsory license for the latter invention patent. An important feature of dependent 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 period.
For this reason, Article 48 of China's Patent Law stipulates: "When a unit with implementation conditions requests the patentee of an invention or utility model to exploit its patent under reasonable conditions, but fails to obtain such permission within a reasonable period of time, the the State Council Patent Administration Department may grant a compulsory license to exploit the invention patent or utility model patent upon the application of the unit." Article 5 of the Patent Law stipulates: "Where an invention or utility model for which a patent right has been obtained is a significant technological progress with significant 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 of the State Council may grant a compulsory license to exploit the previous invention or utility model upon the application of the latter patentee. In the case of granting a compulsory license for exploitation in accordance with the provisions of the preceding paragraph, the exclusive administrative department of the State Council may also grant a compulsory license for exploitation of 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 invention-creation involved in compulsory license is semiconductor technology, and the implementation of compulsory license is limited to the non-commercial use of public * *, or the use that is determined by judicial or administrative procedures as anti-competitive behavior and given relief. This situation is stipulated to be consistent with Article 31 (c) of TRIPS.
obviously, these regulations are all aimed at preventing the abuse of patent rights.
before China's entry into WTO, it has made a comprehensive review of intellectual property laws in accordance with TRIPS, and the approval and judicial supervision of compulsory licenses have been completely consistent with TRIPS. Article 51 of China's Patent Law stipulates: "Units or individuals applying for compulsory license in accordance with the provisions of this Law shall provide proof that they have failed to sign a license contract with the patentee on reasonable terms". Article 52 stipulates: "The decision to grant a compulsory license shall specify the scope and time of implementation according to the reasons for the 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 the royalty for compulsory license, they may bring a suit in the people's court within three months from the date of receiving the notice."
(I) the person who has the right to request compulsory license
Does this mean that any person or unit can request and be granted compulsory license? Or, should there be some conditions for the requesting party? For example, whether the party requesting compulsory license should prove to the Patent Office that it can meet the needs of the local market for the patented product.
This issue has not been discussed in either the Paris Convention or TRIPS, 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 one step 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 has 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 better than 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 essential 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 for no 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 unit or individual applying for a compulsory license shall provide proof that it has failed to sign a license contract with the patentee on reasonable terms.
(II) Time for filing a request for non-implementation or compulsory license under reasonable conditions
According to the foregoing, if the remuneration demanded by the invention patentee is too high, or because the patentee just refuses to sign a license agreement, there should be measures to limit the patentee's abuse of rights, that is, the state can grant 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. Or 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, paragraph A(4), of the Paris convention stipulates that within four years after the date of filing a patent application, or within three years after the date of approving a patent for invention, the request for compulsory license shall not be made because it has not been implemented or has not been fully implemented. The phrase "subject to the last expiration date" in the previous sentence means that in practice, when the process of approving the invention patent is less than one year, the four-year period after the date of filing the patent application will apply. On the other hand, if the process of approving the invention patent is more than one year, for example, when the law stipulates that the patent application is examined in substance and the system of delayed examination or objection procedure is adopted, then the period of three years after the date of approving 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 of the grant of the patent right, 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", and also refers to this time limit.
(III) Reasonable reasons for not implementing or not fully implementing
The patentee's failure to implement or not fully implementing the patent is one of the important reasons and conditions for granting the compulsory license. However, if the patented invention has actually been fully implemented, or if the patentee can prove that the patented invention has not been implemented, or that 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 is a legitimate reason for not implementing it, the request for compulsory license shall be rejected.
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 each country. If there are no further specific provisions in the national laws, the Patent Office should determine whether the reasons given 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 that produces patented products was burned down by fire or destroyed by earthquake; Or the government prohibits the production of the patented product or the government has not authorized 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 because he replaces local implementation with import. However, the patentee's unwillingness to produce the patented product due to economic reasons cannot generally be considered as a legitimate reason.
(IV) Compulsory license for public interest
Compulsory license for public interest, also called compulsory license for national interest, is a certain measure taken for the public interest. As mentioned above, for non-implementation or compulsory licensing 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 relevant parties are the patentee of the invention and the country requesting the exploitation of the patent.
The compulsory license for public interest or national interest is stipulated to make it clear that when the patented invention has a significant impact on public interest or national interest, the state should have the right to take direct action for the 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 interests, 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 owns an invention patent in China for a new weapon, and the manufacture of this new weapon in the territory of China is very important for China, but the patentee refuses to sign a license agreement with China to manufacture this weapon in China under reasonable conditions. In this case, the government of China can directly intervene by granting compulsory permission for public interests.
2. Inventions related to the national economy
If a patented product is manufactured in China, which can promote the development of an important sector of China's economy, but the patentee of the invention is unwilling to manufacture it in China and sign a license agreement, in this case, the China government can also directly intervene by granting a compulsory license for public interests.
3. Inventions related to public health
Assuming that using 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, the China government can also directly intervene by granting a compulsory license for public interests.
(V) Rights and Obligations of the Beneficiary of Compulsory License
The beneficiary (licensee) has the right to manufacture, use and sell the patented product according to the contract, whether it is a general compulsory license or a compulsory license for public interests. Whether the beneficiaries of compulsory license have the right to import patented products is not clearly stipulated in Paris Convention or TRIPS. Generally speaking, although the patentee has the exclusive right to import, if the patented product has not been imported by the invention patentee, 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 the relevant patented products to meet the needs of the market.
The main obligations of the beneficiaries of compulsory license are as follows:
1. Pay the patentee a reasonable fee
The beneficiaries of compulsory license are obliged to pay the patentee a reasonable fee, and the amount of the fee is best determined by signing an agreement between the invention patentee and the beneficiaries of compulsory license. Article 54 of China's patent law clearly stipulates: "The unit or individual that has obtained the compulsory license shall pay the patentee a reasonable royalty, the amount of which shall be negotiated by both parties;" If the two parties cannot reach an agreement, it shall be decided by the patent administration department of the State Council. "
why isn't the amount of fees always determined by the patent office in the decision to approve the compulsory license? Because both sides should be allowed to negotiate on imparting technical secrets. Technical secrets are useful for implementing patents, and sometimes they are indispensable to ensure 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 reach an agreement on the amount of the fee, it can only be determined by the Patent Office.
The fee for compulsory licensing of dependent patents is determined according to the same principle.
2. Compulsory license is non-exclusive
Compulsory license is non-exclusive, which means that despite the approval of compulsory license, the invention patentee still has the right to manufacture the patented product 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-exclusive nature of compulsory license also means that the approval of compulsory license does not rule out further approval of compulsory license. The non-exclusive nature of compulsory license taken because it is not implemented or not fully implemented is clearly stipulated in Article 5 A(4) of the Paris Convention and Article 31 (d) of TRIPS. Article 53 of China's patent law also stipulates that "the unit or individual that has obtained the compulsory license for exploitation does not enjoy the exclusive right to exploit, and has no right to allow others to exploit."
3. Non-transferability of compulsory license
Article 5 A(4) of the Paris Convention has stipulated that compulsory licenses approved because they are not implemented or are not fully implemented are not transferable, even if they are sub-licensed. However, the Paris Convention allows the following exceptions. If the department using compulsory license in one unit is transferred to another unit, the law allows the compulsory license to be transferred to that unit together with that department. The provisions of Article 31 (e) of TRIPS are the same.
Although it is not explicitly stipulated in China's patent law, it is understood and implemented in practice.
4. Compulsory license shall be terminated in time
This means that the scope and time of compulsory license shall depend on the purpose of granting compulsory license, and once the reasons for granting compulsory license are eliminated, compulsory license shall be cancelled.
Take medical devices as an example. When an infectious disease suddenly occurs, it may be necessary to import such devices 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 can 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 a compulsory license shall be implemented according to the reasons for the compulsory license.