Compulsory licence provisions across Europe

1. Introduction

1.1 In a recent PageView1 we introduced and discussed the provisions of the UK Patents Act relating to compulsory licences. These provisions can be thought of as a countermeasure against certain potential abuses of the patent system, in particular a patentee not exploiting (or licensing others to exploit) his patented invention in the presence of a demonstrable domestic demand for the patented invention.

1.2 However, while most other European countries have analogous provisions in their patent law, the regulations are by no means uniform across the region.

1.3 Consequently, the aim of this article is to highlight some of the differences between the national laws of European countries relating to working a patented invention and compulsory licenses.

2. Which European countries have provisions relating to compulsory licences?

2.1 There are compulsory licence provisions in the vast majority of European countries (see list below). Where such provisions exist, the grounds on which a licence will be granted and the nature of, and conditions attached to, a granted licence tend to be broadly similar.

2.2 For instance, it is generally the case that, where compulsory licence provisions are in place, any third party may apply to the national patent authority for the grant of a licence, provided that a specified time period has passed and the applicant for a licence has previously made an effort to conclude an agreement on reasonable commercial terms with the patentee.

2.3 In addition, the applicant for a compulsory licence will need grounds on which to base his application. Typically, available grounds will include the patent not being exploited sufficiently to satisfy domestic demand and the situation where the applicant for a licence is unable to exploit an invention for which he holds protection under a patent of later date without infringing a patent of earlier date.

2.4 Generally, any compulsory licence granted will be non-exclusive in nature and confined to supply of the domestic market.

2.5 There are compulsory licence provisions in the following European countries:

Austria Belgium Bulgaria
Czech Republic Denmark Greece
Italy Latvia Luxembourg
Hungary Portugal Slovakia
Finland Germany Ireland
Poland Romania Slovenia
Spain Switzerland Liechtenstein
The Netherlands Turkey United Kingdom

2.6 In Austria, Belgium, Bulgaria, Czech Republic, Denmark, Greece, Italy, Latvia, Luxembourg, Hungary, Portugal, Spain, Slovakia and Switzerland (and Liechtenstein), compulsory licences can be applied for after the expiry of the later of three years from grant or four years from filing of the patent.

2.7 As an aside, Swiss law also contains the interesting feature that if granted compulsory licences are not sufficient to satisfy the Swiss domestic market, an interested third party may request forfeiture of the patent after a period of two years from the date of grant of the first licence.

2.8 In the Netherlands, United Kingdom and Ireland, the time period after which compulsory licences may be applied for is three years from the grant of the patent in question.

2.9 In Germany, compulsory licences can be applied for any time after grant of a patent.

3. Are there countries in Europe with no compulsory licence provisions?

3.1 Yes, Icelandic patent law does not contain any compulsory licence provisions.

3.2 Also, the provisions of Lithuanian patent law relating to a use requirement and compulsory licences were revoked on 15 June 2000. However, in Lithuania there are (since 30 June 2005) compulsory licence provisions in relation to plant variety rights.

4. Do any European countries have additional use requirements?

4.1 There are at least two European countries in which, in addition to compulsory licences being available, a patentee is obliged to demonstrate working of his patented invention.

4.2 In Spain, the owner of a patent is obliged to work the patented invention either himself or through a person authorised by him, by implementing it in Spain or a WTO member state in such a manner that the working is sufficient to satisfy demand on the national market. Working must take place within the latter to expire of a period of four years from the date of filing the patent application, or three years from the date on which grant of the patent was published in the Official Bulletin of Industrial Property. The patentee is required to prove working of the patent before the Register of Industrial Property by means of an official certificate, which certificate is issued within three months following the date on which it was requested and shall state that the patented invention is being worked, setting out the information substantiating that statement.

4.3 In Turkey there are also use requirements which apply to both patents and utility models. In order to meet the working requirement for a patent in Turkey, effective use of the patent in Turkey is required within a period of three years from the date of publication of the granted patent in the official Patent Bulletin.

4.4 Within this (non-extendable) time period, the patentee must file with the Turkish Patent Institute:

i) a certificate of use; or

ii) importation documents; or

iii) documents to prove legal excuse for non-use; or

iv) recordal and publication of offer for patent licensing.

5. Summing Up

5.1 Compulsory licences for patents are provided for in the vast majority of European countries.

5.2 However the provisions are not uniform across the region.

5.3 Iceland and Lithuania do not provide for compulsory licences for patents.

5.4 In almost all European countries, there is no requirement on the patentee to show working or use of his patented invention.

5.5 However, the exceptions include Spain and Turkey which do impose such a requirement on the patentee.

1http://www.hlbbshaw.com/docs/pageview/pageview_20070104153803.pdf

The information provided in this article is, of course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: jon.broughton@hlbbshaw.com. Visit the website at www.hlbbshaw.com.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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