Managing Intellectual Property, May 2013, 117-118

 

HOW TO AVOID COMPULSORY LICENSES                

 

The quid pro que behind grant of a patent in a country other than that of its origin is to help making scientific advances by dissemination of knowledge and transfer of technology. Exploitation of patented invention without prejudicing commerce and industry in the country of grant is considered to be the best mode of achieving this objective.

In order to prevent any abuses which might result from the exercise of exclusive rights, both the TRIPs agreement and the Paris Convention have incorporated adequate provisions stressing on the ‘working’ of patented inventions. Compared to the Paris Convention, Article 27(1) of the TRIPs agreement provides no distinction between the products which are imported and that which are locally manufactured. According to TRIPs, measures against “abuse of monopoly” are to be initiated if the market is not supplied either ways.

While Pakistan is a member of both the TRIPs agreement and the Paris Convention yet in its Patents Ordinance, 2000, it has adopted the position taken by the Paris Convention under its Article 5A(1) – 5A(4) . The 2000 Ordinance, therefore, stresses on the actual manufacturing rather than mere selling. Given this, unless there are circumstances justifying non-exploitation or insufficient exploitation of the patented invention, a patentee who embarks of any action (working through importation) or inaction (non-working), he opens himself to an application for compulsory license.

In terms of law, there is no defined list of circumstances justifying lack of manufacture (non-working) or incomplete manufacture (insufficient working), however, the complex nature of the patented invention and/or the underlying technologies, economic non-viability to establish plant in each country of grant where patented products are sold may be taken as factors favoring import to be construed as the only reasonable and viable means of bringing the invention into public service.

Another ancillary issue relating to the exploitation of patented invention is the “timing”. In line with the provisions of Paris Convention, section 59 of the ibid Ordinance has made it acteclaire that a working is critical after the expiration of a period of 4 years from the date of filing of the patent application or 3 years from the date of grant whichever expires last. This impliedly suggests that decision on grant of the patent must be taken within 4 years from the date of filing irrespective of the fact whether or not there is any provision setting a definite deadline for acceptance or otherwise.

Since 2006, the concept of time liberated prosecution and resulting consequent patent pendency until a best commercial strategy is evolved on part of the applicants has generated a bundle of un-worked patents and has transformed Pakistan Patent Office (PK-PO) a store of record. This delaying tactic may ensue a number of legal issues including an increase in the risk of forfeiture or revocation of the patent. As  prosecution  delays is not amongst grounds supporting delays on patent applicant’s part in working or non-working, a careful patent strategy is sine qua non   to avoid activation of legislative provisions providing for the grant of compulsory licenses.