The Patents and Trade Marks (World Trade Organisation) Regulations 1999

Compulsory licences: other cases

5.  After section 48A of the 1977 Act insert–

“Compulsory licences: other cases.

48B.—(1) In the case of an application made under section 48 above in respect of a patent whose proprietor is not a WTO proprietor, the relevant grounds are–

(a)where the patented invention is capable of being commercially worked in the United Kingdom, that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable;

(b)where the patented invention is a product, that a demand for the product in the United Kingdom–

(i)is not being met on reasonable terms, or

(ii)is being met to a substantial extent by importation from a country which is not a member State;

(c)where the patented invention is capable of being commercially worked in the United Kingdom, that it is being prevented or hindered from being so worked–

(i)where the invention is a product, by the importation of the product from a country which is not a member State,

(ii)where the invention is a process, by the importation from such a country of a product obtained directly by means of the process or to which the process has been applied;

(d)that by reason of the refusal of the proprietor of the patent to grant a licence or licences on reasonable terms–

(i)a market for the export of any patented product made in the United Kingdom is not being supplied, or

(ii)the working or efficient working in the United Kingdom of any other patented invention which makes a substantial contribution to the art is prevented or hindered, or

(iii)the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced;

(e)that by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the United Kingdom, is unfairly prejudiced.

(2) Where–

(a)an application is made on the ground that the patented invention is not being commercially worked in the United Kingdom or is not being so worked to the fullest extent that is reasonably practicable; and

(b)it appears to the comptroller that the time which has elapsed since the publication in the journal of a notice of the grant of the patent has for any reason been insufficient to enable the invention to be so worked,

he may by order adjourn the application for such period as will in his opinion give sufficient time for the invention to be so worked.

(3) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(a) above if–

(a)the patented invention is being commercially worked in a country which is a member State; and

(b)demand in the United Kingdom is being met by importation from that country.

(4) No entry shall be made in the register under section 48 above on the ground mentioned in subsection (1)(d)(i) above, and any licence granted under section 48 above on that ground shall contain such provisions as appear to the comptroller to be expedient for restricting the countries in which any product concerned may be disposed of or used by the licensee.

(5) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(d)(ii) above unless the comptroller is satisfied that the proprietor of the patent for the other invention is able and willing to grant to the proprietor of the patent concerned and his licensees a licence under the patent for the other invention on reasonable terms.”