Part V Licenses Of Right Compulsory Licenses And Government Use

Section 45 Any patentee may, in accordance with the rules and procedures as prescribed in the Ministerial Regulations, apply to the Director-General for an entry to be made in the register to the effect that any other person may obtain a license.

At any time after an entry has been made, the Director-General shall grant a license under the patent to any person who applies for such a license on such conditions, restrictions and royalty terms as agreed upon by the patentee and the applicant. If the patentee and the applicant cannot agree within the period as prescribed by the Director-General, the Director-General shall grant a license on such conditions, restrictions and royalty terms as he deems appropriate.

Any of the parties may appeal the decision of the Director-General made under the preceding paragraph to the Board within thirty days from the receipt of the decision. The decision of the Board shall be final.

The application for and grant of a license under the second paragraph shall comply with the rules and procedures as described by the Ministerial Regulations.

Where an entry is made pursuant to the first paragraph, the annual fees in respect of the patent after the date of the entry shall be reduced as prescribed by a Ministerial Regulations, by at least one half of the annual fees which would be payable if the entry had not been made.

Section 46⁽¹⁾ At any time after the expiration of three years from the grant of a patent or four years from the date of application, whichever is later, any person may apply to the Director-General for a license if it appears, at the time when such application is filed, that the patentee unjustifiably fails to exercise his legitimate rights as follows:

     (1) that the patented product has not been produced or the patented process has not been applied in the country, without any legitimate reason; or

     (2) that no product produced under the patent is sold in any domestic market, or that such a product is sold but at unreasonably high prices or does not meet the public demand, without any legitimate reason.

Whether it is an application under (1) or (2), the applicant for a license must show that he has made an effort to obtain a license from the patentee having proposed conditions and remuneration reasonably sufficient under the circumstances but unable to reach an agreement within a reasonable period.

The application for a license shall comply with the rules and procedures prescribed in the Ministerial Regulations.

Section 47⁽¹⁾ If the working of any claim in a patent is likely to constitute an infringement of a claim in a patent of any other person, the patentee, desiring to exploit his own patent, may apply to the Director-General for a license under the patent of the other person under the following criteria:

     (1) the invention of the applicant involves an important technical advance of considerable economic significance in relation to the invention for which the license is applied;

     (2) the patentee shall be entitled to a cross-license on reasonable terms;

     (3) the applicant shall not assign his right in the license to other persons except with the assignment of his patent.

The applicant for a license must show that he has made an effort to obtain a license from the patentee having proposed conditions and remuneration reasonably sufficient under the circumstances but unable to reach an agreement within a reasonable period.

The application for a license shall comply with the rules and procedures prescribed by the Ministerial Regulations.

Section 47 bis⁽²⁾ If the working of any claim in the patent having obtained a license under Section 46 is likely to constitute an infringement of a claim in a patent of any other person, the applicant for a license under Section 46 may apply to the Director-General for a license under the patent of the other person under the following criteria:

     (1) the invention of the applicant involves an important technical advance of considerable economic significance in relation to the invention for which the license is applied;

     (2) the applicant shall not assign his right in the license to other persons.

The applicant for a license must show that he has made an effort to obtain a license from the patentee having purposed conditions and remuneration reasonably sufficient under the circumstances but unable to reach an agreement within a reasonable period.

The application for a license shall comply with the rules and procedure prescribed by the Ministerial Regulations.

Section 48⁽¹⁾ Where a compulsory license is granted under Section 46, 47 or 47 bis , the patentee shall be entitled to remuneration.

The licensee under Section 38 shall be entitled to remuneration where a compulsory license is granted under 46, 47 or 47 bis, provided that he has the exclusive right to grant licenses to other persons. In such circumstances, the patentee shall not be entitled to such remuneration.

Section 49⁽²⁾ In an application for a license made under Section 46, 47 or 47 bis, the applicant shall set forth the amount of remuneration, the conditions for the exploitation of the patent and the restrictions on the rights of the patentee and the exclusive licensee under paragraph 2 of Section 48, and a request for a license. In the application for a license under Section 47, the applicant shall also offer a license under his patent to the other party.

Where an application for a license is filed pursuant to Section 46, 47 or 47 bis, the competent officer shall notify the applicant the patentee and the exclusive licensee under paragraph 2 of Section 48 of the date on which the application shall be considered. The patentee and the exclusive licensee shall be furnished with a copy of the application.

In the consideration of an application for a license under the preceding paragraph, the competent officer may require the applicant, the patentee or the exclusive licensee under paragraph 2 of Section 48 to appear before him to give any statement, or to hand over to him any document or any other item. When the application has been considered by the competent officer and the Director-General has made his decision, the applicant, the patentee and the exclusive licensee shall be notified of the decision.

The decision of the Director-General made under the preceding paragraph is appealable to the Board within sixty days of receipt of the notice.

Section 50⁽¹⁾ Where it is decided by the Director-General that a license shall be granted to the applicant under Section 46, 46 bis or 47, the Director-General shall set forth the royalty and the conditions for the exploitation of the patent and the restrictions on the rights of the patentee and the exclusive licensee under Section 48 paragraph 2 as agreed upon by the patentee and the applicant. If no agreement has been reached by the parties within the period prescribed by the Director-General, the Director-General shall fix the royalty and prescribed the conditions and restriction as he deems appropriate subject to the following requirements:

     (1) the scope and duration of the license shall not be more than necessary under the circumstances;

     (2) the patentee shall be entitled to further license others;

     (3) the license shall not be entitled to assign the license to others, except with that part of the enterprise or goodwill particularly of the part under the license;

     (4) the licensing shall be aimed predominantly for the supply of the domestic market;

     (5) the remuneration fixed shall be adequate for the circumstances of the case.

The decision of the Director-General made under the first paragraph of the Section is appealable to the Board within sixty days from the date on which such decision is received.

The issuance of a licensing certificate shall comply with the form, rules and procedures prescribed in the Ministerial Regulations.

Section 50 bis⁽¹⁾ A license issued under Section 46 may be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur provided that the termination does not affect the rights or interests of the licensee under the license.

The application for termination of a license under the first paragraph shall be in accordance with the forms, rules and procedures prescribed in the Ministerial Regulations, the provisions of Section 49 paragraphs two and three and Section 50 applying mutatis mutandis.

Section 51⁽²⁾ In order to carry out any service for public consumption or which is of vital importance to the defense of the country or for the preservation or realization of natural resources or the environment or to prevent or relieve a severe shortage of food, drugs or other consumption items or for any other public service, any ministry, bureau or department of the Government may, by themselves or through others, exercise any right under Section 36 by paying a royalty to the patentee or his exclusive licensee under paragraph 2 of Section 48 and shall notify the patentee in writing without delay, notwithstanding the provisions of Section 46, 46 bis and 47.

In the circumstances under the above paragraph, the ministry or bureau or department shall submit its offer setting forth the amount of remuneration and conditions for the exploitation to the Director-General. The royalty rate shall be as agreed upon by the ministry or bureau or department and the patentee or his licensee, and the provisions of Section 50 shall apply mutatis mutandis.

Section 52⁽³⁾ During a state of war or emergency, the Prime Minister, with the approval of the Cabinet, shall have the power to issue an order to exercise any right under any patent necessary for the defense and security of the country by paying a fair remuneration to the patentee and shall notify the patentee in writing without delay.

The patentee may appeal the order or the amount of remuneration to the court within sixty days from the receipt of the order.

Part VI Surrender Of Patent Or Claims And Cancellation Of Patent

Section 53⁽¹⁾ Any patentee may surrender his patent or any claim or claims there of in accordance with the rules and procedures prescribed in the Ministerial Regulations.

In order to surrender a patent or any claims under the preceding paragraph, if the patent is jointly owned by two or more persons, the surrender shall be made with the consent of all patentees. If licenses have been granted under Section 38, 45, 46, 47 or 47 bis such surrender shall be made with the consent of all licensees.

Section 54 Any patent granted not in compliance with the provisions of Section 5, 9, 10, 11 or Section 14 shall be invalid.

The invalidity of a patent may be challenged by any person. A petition to cancel an invalid patent may be submitted to the Court by any interested person or the public prosecutor.

Section 55⁽²⁾ The Director-General may request the Board to cancel a patent in any of the following circumstances:

     (1) when a license has been issued under Section 50 and a period of two years has lapsed from the date of issuance of the license, the patentee, the licensee of the patentee or the holder of the license fails to produce the patented product or use the patented process without any legitimate reason, or no patented product or product derived from the patented process is sold or imported into the country or such a product is hold at unreasonably high price, and the Director-General thinks that there is a good cause to cancel the patent;

     (2) the patentee has licensed another person to use the rights contrary to the provisions of Section 41.

Before requesting the Board to cancel a patent, the Director-General shall order an investigation to be held, and notify the patentee and licensees of the order so that they may be given an opportunity to submit their statements. The submission of the statements shall be made within sixty days from the receipt of the order. The Director-General may require any person to appear before him to answer any question or to hand over any document or any other item to him.

After the investigation and where it appears that there is good ground to cancel the patent, the Director-General shall submit his report of the investigation to the Board to cancel the patent.

Part 5