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PART IV.
Voluntary and Compulsory Endorsement, Anticipation, and Provisions as to Rights in Inventions.
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Endorsement of patent “licences of right”.
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37.—(1) At any time after the sealing of a patent the patentee may apply to the Controller for the patent to be endorsed with the words “licences of right”; and where such an application is made, the Controller shall notify the application to any person entered on the register as entitled to an interest in the patent, and if satisfied, after giving any such person an opportunity to be heard, that the patentee is not precluded by contract from granting licences under the patent, cause the patent to be endorsed accordingly.
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(2) Where a patent is endorsed under this section—
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(a) any person shall, at any time thereafter, be entitled as of right to a licence under the patent upon such terms as may, in default of agreement, be settled by the Controller on the application of the patentee or the person requiring the licence;
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(b) the Controller may, on the application of the holder of any licence granted under the patent before the endorsement, order the licence to be exchanged for a licence to be granted by virtue of the endorsement upon terms to be settled as aforesaid;
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(c) if in proceedings for infringement of the patent (otherwise than by the importation of goods) the defendant undertakes to take a licence upon terms to be settled by the Controller as aforesaid, no injunction shall be granted against him, and the amount (if any) recoverable against him by way of damages shall not exceed double the amount which would have been payable by him as licensee if such a licence had been granted before the earliest infringement;
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(d) the renewal fees payable in respect of the patent after the date of the endorsement shall be one half of the renewal fees which would be payable if the patent were not so endorsed.
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(3) In settling the terms of any such licence the Controller—
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(a) shall endeavour to secure the widest possible user of the invention in the State consistent with the patentee's deriving a reasonable advantage from his patent rights,
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(b) shall endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in the State,
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(c) shall endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the patentee under any licence previously granted,
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(d) may so frame the terms as to preclude the licensee from importing into the State any goods the importation of which, if made by persons other than the patentee or those claiming under him, would be an infringement of the patent, and in such a case the patentee and all licensees under the patent shall be deemed to have mutually covenanted against such importation.
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(4) The licensee under any licence granted by virtue of the endorsement of a patent under this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to call upon the patentee to take proceedings to prevent any infringement of the patent; and if the patentee refuses or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as if he were patentee, making the patentee a defendant:
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Provided that a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
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(5) An application for the endorsement of a patent under this section shall contain a statement (to be verified in such manner as may be prescribed) that the patentee is not precluded by contract from granting licences under the patent; and the Controller may require from the applicant such further evidence as he may think necessary.
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(6) An application made under this section for the endorsement of a patent of addition shall be treated as an application for the endorsement of the patent for the main invention also, and an application made under this section for the endorsement of a patent in respect of which a patent of addition is in force shall be treated as an application for the endorsement of the patent of addition also; and where a patent of addition is granted in respect of a patent already endorsed under this section, the patent of addition shall also be so endorsed.
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(7) All endorsements of patents under this section shall be entered in the register of patents and shall be published in the Journal and in such other manner as the Controller thinks desirable for bringing the endorsement to the notice of manufacturers.
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(8) An appeal shall lie from any decision of the Controller under this section.
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