Author: Xu Ximin Release Time:
[Abstract] "Castle Peak cannot be covered, after all, it flows eastward". After 15 years of long and arduous negotiations, China finally stepped into the threshold of the WTO and became a member of it. This is a milestone in China's opening-up and modernization drive. WTO is an international economic organization based on legal rules and has a set of systematic legal provisions. Among them, Marrakesh Agreement on Establishing the World Trade Organization (GATT), General Agreement on Trade in Services (GATS) and Agreement on Trade-related Intellectual Property Rights (Trips Agreement) constitute three basic substantive agreements. Trips Agreement is an agreement with a treaty, that is, on the basis of absorbing and confirming the protection standards of existing international conventions on intellectual property rights, by refining and perfecting the protection standards, various substantive norms of intellectual property protection are further stipulated. Mr. Zheng once said: "The free circulation of goods, services and intellectual property protection constitute the three pillars of the WTO. Among these three pillars, intellectual property is the most important, because intellectual property is closely related to the sales of tangible goods and trade in services. In fact, intellectual property protection has played a role in ensuring the free flow of goods and services. " ①
Key words: right restriction, restriction of right restriction, statutory cross-licensing, state of emergency, patent improvement
The "patent" part of the Agreement on Intellectual Property Rights is the most difficult part in the negotiation process, which involves a controversial issue between developed and developing countries. At the Doha Ministerial Conference of WTO, intellectual property rights and public health became a controversial issue. Developing countries believe that they should be able to obtain "life-saving" drugs to treat AIDS, tuberculosis and other diseases at low prices. Because these drugs are basically expensive patented drugs produced by developed countries, poor countries can't buy or can't buy suitable drugs, so some developing countries, led by Brazil, demand that the Trips agreement allow countries to take special measures in the case of public health crisis, such as allowing domestic enterprises to copy foreign patented drugs. The United States is worried that similar special measures will be abused, thus affecting the profitability of its pharmaceutical industry. The final progress of the meeting is that in the case of public health emergencies, WTO members can take breakthrough measures to protect drug patents. ②
First, the patent compulsory licensing system
The part about "patent" in Trips Agreement is mainly aimed at "right restriction" of patent. These provisions include three aspects: first, it stipulates what scope of rights restrictions members are allowed to make; Second, what scope of rights restrictions are not allowed for members; The third is what conditions must be met within the allowable range. For general rights restrictions, the agreement only stipulates principles, but members can make exceptions to exclusive rights. "Exceptions" are mainly "rights restrictions" (that is, compulsory licensing). In most developing countries, there are compulsory licensing clauses, which grant the patentee an exclusive patent right in developing countries for a certain period of time. After this period, the obligee must license his patent to the local industry under the condition of obtaining compensation. This regulation requires that the patent should be implemented locally within a short time (such as three years) after the patent is granted. If the patent cannot or is not developed in time, it becomes the object of compulsory license.
The (1) agreement stipulates the preconditions that exceptions should meet, namely: ③.
(1) must be in order not to make the patent interfere with the legitimate interests of the third party;
(2) Such restrictions shall not conflict with the normal use of the patent (including not harming the interests of the patent licensee);
(3) This restriction cannot unreasonably harm the interests of the patentee.
(2) The reasons stipulated in the Trips Agreement and other reasons.
Item 2 of Article 3 1 of Trips Agreement clearly stipulates the following reasons:
(1) Reject the transaction. That is, "before such use, the intended user has sought the authorization of the obligee on reasonable commercial terms and conditions, but such use is allowed only if the struggle is unsuccessful within a reasonable period of time." This provision is actually related to anti-monopoly. Patent right is a legal monopoly right, but the right holder abuses its monopoly position and refuses the reasonable use requirements of others, which is a refusal to abuse its monopoly position in the nature of transaction. ④
In order to obtain compulsory license based on compulsory transaction, the interested party should prove that it has sought the voluntary authorization of the obligee on reasonable commercial terms and conditions, but it has been rejected or failed to reply within a reasonable time.
(2) state of emergency and extreme cases. This means that "in case of domestic emergency, other emergency or non-commercial use, members can waive these conditions." However, in case of domestic emergency or other emergency, the obligee shall be notified in a timely manner within a reasonable time. "The reason for this compulsory license is a state of emergency or similar reasons, such as hunger related to public health and nutrition.
(3) Anti-competitive behavior. Compulsory license can be used to remedy anti-competitive behavior, and members do not have to apply the conditions stipulated in items (2) and (6). In this case, the need to correct anti-competitive behavior should be considered when determining remuneration. The United States applies this compulsory license according to its Sherman antitrust law.
Compulsory license to remedy anti-competitive behavior is the concrete application of the principle of prohibiting the abuse of intellectual property rights in Article 8, paragraph 2, of Trips Agreement. Such permission must be compensated to the obligee. When determining the amount of compensation, we can consider the need to correct anti-competitive behavior, and allow the reduction of compensation or even free license (such as the United States). ⑤
(4) Non-commercial use. This happens when a government agency uses a protected patent to accomplish its mission. It should be noted that this kind of use does not have to be directly used by the government, but can also be enjoyed by private individuals. This kind of compulsory license does not require prior request and notice.
5] Dependent patent. Item ⑾ of Article 3 1 of the Trips Agreement stipulates: "If such use is for the purpose of utilizing one (the' second patent') and the patent cannot be used without infringing other patents (the' first patent'), the following additional conditions shall apply: ① Compared with the invention in the first patent, the invention in the second patent shall involve important technological progress with great economic significance; (2) The owner of the first patent has the right to use the invention in the second patent by cross-licensing under reasonable conditions; (3) The use of the first patent granted shall not be assigned unless it is assigned together with the second patent. " This is a compulsory license granted on the basis of patent dependence.
In this compulsory license, the second patent must have "important technological progress with great economic significance". This kind of patent is actually an "improved patent". In some countries, improving patents is of great significance to the development of electronic industry. However, improving the compulsory license of the original patent must rely on the comparison of their economic and technological values. The standard of this value comparison depends on the economic and technical conditions of the country that granted the patent, as well as the scale and strength of the patentee involved. Therefore, patents of great economic significance in developing countries are not necessarily the case in developed countries.
[6] Other reasons. The compulsory licensing cause stipulated in Article 3 1 of Trips Agreement is an exemplary provision, and members can also stipulate other compulsory licensing causes in their domestic laws. Such as: public interest; Reasons for environmental protection; Not implemented or not fully implemented; The need of domestic export.
(3) Restrictions on compulsory license (Zheng called it "rights restrictions") ⑥
Although the Trips Agreement provides flexible reasons for compulsory licensing, it provides specific conditions for granting compulsory licensing, namely:
(1) Compulsory license (or government use) must be handled on a case-by-case basis, and the experience of granting compulsory license cannot be used as a routine or general rule.
(2) Before applying for or approving a compulsory license, reference should be made to the provisions on compulsory license of copyright in the annex of Berne Convention. Because the Agreement on Intellectual Property Rights basically borrows the compulsory licensing conditions in Berne Convention into the compulsory patent licensing system, but only adds "national emergency" and "other special emergencies".
(3) If the relevant patent involves semiconductor technology, there are more restrictions on issuing compulsory license.
(4) All compulsory licenses can only be "non-exclusive" and "non-exclusive". In other words, after the government forces a third party to use the patented content, the patentee still has the right to use it himself or license others to use it through a contract.
5] Compulsory license is generally not transferable, unless it is transferred together with the enterprise or its goodwill.
[6] Products manufactured under compulsory license are mainly supplied to the domestic market.
Once the conditions leading to compulsory license disappear and will not happen again, it should be stopped (also known as the "principle of situation recovery").
(8) Compulsory licensing of "subordinate patents" should be subject to more restrictions and meet the conditions of the last item of Article 3 1 of Trips Agreement.
(9) Statutory cross-licensing system. The cross-licensing system helps to prevent the holders of the "first patent" and the "second patent" (especially the latter) from unreasonably preventing each other from implementing the relevant patents. Although this provision is combined with "compulsory license", it is essentially a "statutory license". Generally speaking, the compulsory licensing system can be used by uncertain people in the public, and the "legal licensing system" can only be used by some people (one of the first or second patentees). ⑦
⑽ All "involuntary licenses" must be used with compensation and may not be used for free.
⑾ If an involuntary licensing decision is made, the obligee shall be provided with an opportunity to request a review, and the amount of the use fee paid for the involuntary licensing occasion shall also be provided with an opportunity to review (judicial review and administrative review).
Second, China's compulsory patent licensing system
Chapter VI of China's Patent Law and Chapter V of the Detailed Rules for the Implementation of the Patent Law both stipulate "compulsory license for patent exploitation".
(1) reason
The patent law stipulates three reasons:
One is compulsory license when the license is not obtained within a reasonable period of time. Article 48 of the Patent Law stipulates: "If a unit that has the conditions for implementation requests the patentee of an invention or utility model to exploit its patent on reasonable terms and fails to obtain a 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 on the basis of the application of the unit". Article 72 of the Detailed Rules for the Implementation of the Patent Law stipulates: "After three years from the date of the grant of the patent right, any unit may, in accordance with the provisions of Article 48 of the Patent Law, request the patent administration department of the State Council to grant a compulsory license. Where a compulsory license is requested, a written request for compulsory license shall be submitted to the patent administration department of the State Council, explaining the reasons and attaching relevant supporting documents in duplicate. The administrative department for patent in the State Council shall send a copy of the request for compulsory license to the patentee, who shall state his opinions within the time limit specified by the administrative department for patent in the State Council; Failure to reply at the expiration of the time limit will not affect the decision of the patent administration department of the State Council to make a compulsory license. "
Second, the state makes compulsory permission for emergencies and other extraordinary circumstances. Article 49 of the Patent Law stipulates: "In case of national emergency or special circumstances, or for the purpose of public interest, the patent administration department of the State Council may grant a compulsory license to exploit the invention patent or utility model patent."
The third is to promote the compulsory licensing of new inventions. Article 50 of the Patent Law stipulates: "If a patented invention or utility model is more advanced in technology than a previously patented invention or utility model, 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 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 5 1 of the Patent Law stipulates that "any entity or individual applying for compulsory license in accordance with the provisions of this Law shall provide proof that it has not signed a license contract with the patentee on reasonable terms". This article stipulates the burden of proof of the applicant for compulsory license.
(2) Procedures
Article 52 of the Patent Law The decision made by the administrative department for patent in the State Council to grant a compulsory license for exploitation shall be registered and announced.
The decision to grant compulsory license shall stipulate 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.
(3) Limitation and compensation (remuneration) ⑧
Article 53 of the Patent Law stipulates: "Units and individuals that have obtained the compulsory license for exploitation do not enjoy the exclusive exploitation right and have no right to allow others to exploit it."
The detailed rules for the implementation of the Patent Law stipulate that the decision to grant compulsory license made by the patent administrative department of the State Council shall be limited to the needs of supplying 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.
Article 54 of the Patent Law stipulates: "A unit or individual that has obtained a compulsory license for exploitation shall pay a reasonable royalty to the patentee, 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. " Article 73 of the Detailed Rules for the Implementation of the Patent Law stipulates that, in accordance with Article 54 of the Patent Law, if the administrative department for patent in the State Council is requested to make a ruling on the amount of royalties, the parties concerned shall submit a written request for ruling, with supporting documents that the two parties cannot reach an agreement. The administrative department for patent in the State Council shall make a ruling within 3 months from the date of receiving the request and notify the parties concerned.
(4) Judicial review
Article 55 of the Patent Law stipulates the judicial review of compulsory license. If the patentee refuses to accept the decision of the patent administrative department in the State Council to implement compulsory license, and if the patentee and the unit or individual that has obtained compulsory license refuse to accept the decision of the patent administrative department in the State Council, they may bring a lawsuit to the people's court within 3 months from the date of receiving the notice.
Second, the differences between China's legislation and Trips Agreement.
1, industrial design can be used as a patent right?
Today, most countries protect industrial designs. As a minimum requirement, the Paris Convention stipulates that all member countries must protect industrial designs. However, the Paris Convention does not specify what kind of laws should be adopted for protection. In some countries, industrial designs and "practical works of art" (that is, the objects protected by copyright law) are regarded as the same. Industrial design can be said to be the first protected object of "industrial copyright" and the first driving factor for its appearance.
As early as 1806, France promulgated a special law on industrial design to protect industrial property rights. However, many artistic creations meet the protection requirements of the law of 1806 and the French copyright law of 1793. How to distinguish which designs can only be protected by industrial property law but not by copyright law has become a difficult problem. It was not until 1968 that Britain promulgated the Copyright Law of Designs, and the concept of "special industrial copyright" formally appeared. Since then, some countries have followed the example of Britain (such as Singapore and Germany) in the protection of industrial designs. The Agreement on Intellectual Property Rights not only emphasizes the protection of industrial designs, but also allows members to freely choose what kind of laws to protect them. In China, industrial designs are protected by patent law. However, China called this right "patent", which had at least one side effect in 2006. Some people mark "patent design" on the products they sell after obtaining the design patent, but few people mark "patent design", which deceives (at least misleads) consumers to some extent. Because consumers often equate "patent" with "invention patent". In other countries, this problem will not occur, because "design right" is not called "patent" there. ⑨
2. Should industrial designs be subject to compulsory licensing?
The Trips Agreement does not mention the compulsory licensing of industrial designs, and in most countries that protect industrial designs by industrial property law, it is not allowed to adopt the compulsory licensing system for industrial designs. China's patent law only provides for compulsory licensing of invention patents and utility model patents. However, the agreement allows member countries to impose certain restrictions on industrial design rights, but these restrictions must meet three preconditions:
(1) Their design must ensure that the legitimate rights and interests of third parties will not be unduly affected by the exclusive right to design.
(2) It shall not interfere with the normal use of the relevant design, including the interests of the legal licensee.
(3) It shall not exceed a reasonable limit, so as not to harm the interests of the obligee.
In practice, China can only take compulsory license for invention patents, utility model patents and copyrights, and never take compulsory license for trademark rights and design patents. However, Trips Agreement is neither prohibited nor allowed, leaving a problem worth discussing.
Precautions:
① Zheng: Intellectual Property Law-Some Research Hotspots at the Beginning of the New Century, Law Press, 278 (2004).
② Kong Xiangjun: WTO Intellectual Property Agreement and Its Domestic Application, Law Press, 2002, pp. 228-229.
③ Zheng: Intellectual Property Law-Some Research Hotspots at the Beginning of the New Century, Law Press, 2004, p. 339.
④ Kong Xiangjun: WTO Intellectual Property Agreement and Its Domestic Application, Law Press, 257th, 2002.
⑤ See P.Mendes da Costa, "Patent Coordination through GATT: TRIP or Trap? , the patent world ",(September1992); Reprinted in Kong Xiangjun: WTO Intellectual Property Agreement and Its Domestic Application, Law Press, 258th, 2002.
⑥ Zheng: Intellectual Property Law-Some Research Hotspots at the Beginning of the New Century, Law Press, 2004, p. 339.
⑦ Zheng: Intellectual Property Law-Some research highlights at the beginning of the new century, Law Press, 2004, p. 34 1.
Kong Xiangjun: WTO Intellectual Property Agreement and Its Domestic Application, Law Press, 2002, pp. 262-263; Patent Law (August 25th, 2000); Detailed Rules for the Implementation of the Patent Law (2006 54 38+0 6 65 438+05).
⑨ Zheng: Intellectual Property Law-Some Research Hotspots at the Beginning of the New Century, Law Press, 2004, p. 332.
(Author: Tianning District People's Court, Changzhou City, Jiangsu Province)