Patents (Amendment) Act 2006

Compulsory licences (section 70 of Principal Act).

19.— Section 70 of the Principal Act is amended by the substitution for that section of the following:

“Compulsory licences.

70.— (1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on any or all of the following grounds:

(a) that—

(i) a demand in the State for the subject matter of the patent is not being met or is not being met on reasonable terms, or

(ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the World Trade Organisation;

(b) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced.

(2) If an invention protected by a patent (in this section referred to as ‘the second patent’) cannot be exploited in the State without infringing rights deriving from another patent (in this section referred to as ‘the first patent’) the proprietor of the second patent may apply to the Controller for a licence under the first patent to the extent necessary for the exploitation of the invention concerned, provided that such invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent.

(3) Where an application is made under this section, if the Controller is satisfied—

(a) that any of the grounds specified in subsection (1) are established, or

(b) that an invention protected by a patent cannot be exploited without infringing rights deriving from the first patent as referred to in subsection (2),

the Controller may make an order in accordance with the application and, where the order is for the grant of a licence, the order may require the licence to be granted upon such terms as the Controller thinks fit, provided that:

(i) any licence granted shall be non-exclusive;

(ii) any licence granted shall be predominantly for the supply of the market in the State;

(iii) any licence granted may only be assigned with the prior authorisation of the Controller and with that part of the enterprise or goodwill which uses the patented invention and, in the case of a licence granted on an application under subsection (2) in respect of the first patent, the licence may only be assigned by the proprietor of the second patent in conjunction with the assignment of the second patent;

(iv) a licence shall only be granted subject to the payment to the proprietor of the patent of adequate remuneration in the circumstances of the case, taking into account the economic value of the licence;

(v) the scope and duration of the licence shall be limited to the purpose for which it is granted;

(vi) any licence granted on an application under subsection (1) in respect of a patent which relates to semi-conductor technology shall only be for public non-commercial use;

(vii) no order shall be made on an application under subsection (2) unless the proprietor of the second patent is able and willing to grant the proprietor of the first patent and the licensee of that proprietor a cross-licence, on reasonable terms, to use the invention claimed in the second patent.

(4) The Controller shall, in determining whether to make an order pursuant to an application under this section, take account of the following matters, namely—

(a) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor or any licensee to make full use of the invention,

(b) the ability of any person to whom a licence would be granted under the order to exploit the patent to the public advantage, and

(c) the risks to be undertaken by that person in providing capital and exploiting the patent if the application is granted.

(5) Section 68(3) shall apply to a licence granted pursuant to an order under this section as it applies to a licence granted by virtue of section 68.”.