Review of Granted Compulsory Licences

Compulsory Licensing: Practical Experiences and Ways Forward (Reto M. Hilty & Kung-Chung Liu eds., Springer, 2015)

The Chinese University of Hong Kong Faculty of Law Research Paper No. 2015-17

20 Pages Posted: 28 Jan 2016 Last revised: 28 Sep 2019

See all articles by Chung-Lun Shen

Chung-Lun Shen

National Chengchi University (NCCU)

Jyh-An Lee

The Chinese University of Hong Kong (CUHK) - Faculty of Law

Abstract

Legislators recognise that exceptions and limitations may be established to help the achievement of the ultimate goal under patent law. However, exceptions and limitations are made to keep the interest balance between the patentee and the public, including the potential competitors of the patentee. Such interest balance would be obtained when patentees are restrained from asserting their exclusive rights against some acts that have no substitution effects on the patented products and, at the same time, are conducive to the disclosure of and access to the patent to enhance the technological development. This inference is supported by Art. 30 of the TRIPS Agreement, after which limited exceptions can be allowed in patent law provided that they “do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties”.

In our opinion, “a normal exploitation” and “the legitimate interests” of the patent should be subject to the substitution effects of the products made under compulsory license, and the legitimate interests of third parties should be measured by whether such interests benefit the ultimate goal of patent law. When the infringing acts have no substitution effects, “a normal exploitation” and “the legitimate interests” of the patent are not negatively impacted, and such acts may justifiably be named as exceptions and limitations.

The granting of a compulsory license functions through the waiver of specific exclusive rights, to an extent. Therefore, the granting of a compulsory license is among the exceptions and limitations under patent law. Based on our arguments about the exceptions and limitations, the granting of a compulsory license should be tested by the criteria of Art. 30 TRIPS Agreement to secure its justification.

Keywords: Compulsory License, Patent, Public Health

Suggested Citation

Shen, Chung-Lun and Lee, Jyh-An, Review of Granted Compulsory Licences. Compulsory Licensing: Practical Experiences and Ways Forward (Reto M. Hilty & Kung-Chung Liu eds., Springer, 2015), The Chinese University of Hong Kong Faculty of Law Research Paper No. 2015-17, Available at SSRN: https://ssrn.com/abstract=2653042

Chung-Lun Shen

National Chengchi University (NCCU) ( email )

No. 64, Chih-Nan Road
Section 2
Wenshan, Taipei, 11623
Taiwan

Jyh-An Lee (Contact Author)

The Chinese University of Hong Kong (CUHK) - Faculty of Law ( email )

6/F, Lee Shau Kee Building
Shatin, New Territories
Hong Kong

Here is the Coronavirus
related research on SSRN

Paper statistics

Downloads
42
Abstract Views
324
PlumX Metrics