Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

Intellectual Property

Singapore Small Flag Singapore

Save for plant varieties and trade secrets/know-how, declaratory relief can be obtained.

For registered designs and patents, a person can also apply to the High Court for a compulsory licence to remedy an anti-competitive practice.

Specific to patents, a patent proprietor can apply to the registrar of patents for an entry to be made in the register to the effect that licenses under the patent are to be available as of right.

Specific to plant varieties, a person can also apply to the High Court for the grant of a compulsory license to exploit a protected variety in Singapore.

France Small Flag France

As regards patents, pursuant to IPC article L.615-9, a declaration of non-infringement can be introduced by any operator providing evidence, at least, of the performance of serious preparatory acts for industrial exploitation; such a declaration invites the patent holder to state whether the patent could be infringed.

If the right owner fails to answer or in case of disagreement between the parties, the claimant will be entitled to bring an action before Paris Court of First Instance.

In addition, pursuant to IPC article L.613-11, if a patent remains unexploited after the expiry of a three year period after the grant, any person will be free to ask to be granted a compulsory license on the patent.

As regards trademark, pursuant to IPC article L714-5, it should be noted that an operator willing to secure its use of a distinctive sign can also consider initiating revocation proceedings against owners who have not put into genuine use their registered trademark(s) in relation with the designated products and services.

Portugal Small Flag Portugal

R: Yes, both are possible.

India Small Flag India

Trademarks: Trade marks can be registered on a conditional basis, such as with the inclusion of a disclaimer.

Copyright: the exceptions to copyright, enumerated above, serve to limit the operation of copyright.

Greece Small Flag Greece

Declaratory relief; i.e. a main action seeking a declaratory judgment of non infringement, is generally not available in Greece.

Compulsory licenses are allowed, mainly in connection with invention-related rights and only under strict circumstances.

Japan Small Flag Japan

No.

Mexico Small Flag Mexico

Inventions

IP right

Methods to remove or limit the effect

Patents

Educational reasons with non-commercial purposes and/or the exhaustion of the right of the patent owner and/or use an invention before someone else files a patent application and/ the use of the invention referred to in transportation vehicles of other countries when it forms part of such vehicles and when the vehicles are in transit in national
territory and/or using patents with living beings as a resource for obtaining new products and/or an obligatory license in case of lack of use/national security/public emergency.

Utility models

Industrial designs

Integrated circuits

 

Brands

IP right

Methods to remove or limit the effect

Trademarks

A trademark registration shall not be effective against  any third party that markets, distributes, acquires or uses the product to which the registered trademark is applied, after the relevant product has been lawfully introduced in the market and/or when an individual or entity applies his own name or its company or business name to goods or services and/or any third party that can prove an earlier use of an identical or confusingly similar trademark in Mexico to cover identical or similar products.

Trade names

Slogans

Appellations of Origin

N/A

 

Copyright and other rights

IP right

Methods to remove or limit the effect

Copyright

Copyright could be limited a) if the author is mentioned in the quoting and does not represent a substantial reproduction; b) for scientific, literary or artistic investigation and security purposes; c) reproduction for private use; d) for using as evidence in an administrative or judicial procedure; e) for the use of disabled people with non-commercial purposes; f) for utility public service

Related rights

Related rights could be limited a) if the holder of the right is recognized and does not represent a substantial reproduction; b) for scientific, literary or artistic investigation and security purposes; c) reproduction for private use; d) for using as evidence in an administrative or judicial procedure; e) for the use of disabled people with non-commercial purposes; f) for utility public service.

Reservation of rights

Any third party that can prove an earlier use of an identical or similar reservation of rights.

Plant varieties

Plant varieties could be limited by a license in case of national security or public emergency.

China Small Flag China

SIPO may grant compulsory licences of invention patents and utility model patents in exceptional circumstances, e.g. in a national emergency, or to protect public health or the public interest.

SIPO may conduct a substantial examination of the application upon request by an applicant at any time. If an applicant fails to request substantial examination of the patent within three years of the date of the patent application, the application shall be deemed as withdrawn.

The limitation of actions for patent infringement is two years from the date the patentee becomes aware of the infringement.

Faced with a formal threat of action for intellectual property infringement, a person can apply to court for a declaration of non-infringement.

United Kingdom Small Flag United Kingdom

Declaratory relief in respect of patents
A third party wishing to clear the way before launching a product or concerned that they infringe, or may infringe, a patent may apply to the court for a declaration that dealings with the product or process in question would not infringe the patent. Before applying to the court, the party must contact and provide the patent owner with the opportunity to consider the relevant products or processes. If the patent owner believes the patent is infringed, the third party may then apply to the Court or the Comptroller for a declaration of non-infringement (confirming that the acts in question would not infringe the patent).

A recent development in UK case law provides a further type of declaration in cases where a patent has not yet been granted (so is not yet capable of being opposed or revoked). This is known as an "Arrow" or "Fujifilm" declaration and is essentially a court declaration that the third party's products or process would not have been new or inventive at the priority date of the pending patent (so could not infringe a valid patent). Such declarations are only available in exceptional circumstances.

Proceedings for such declarations will be of similar scale to a "standard" infringement and validity cases.

The Patents Act also provides for a party to apply to the "Comptroller" via the UKIPO for a non-binding opinion on issues including patentability, sufficiency, added matter and extension of scope. While such opinions are non-binding, they can provide a useful indicator to a party intending to carry out a potentially infringing act and can strengthen a party's position in settlement negotiations. The Comptroller may also revoke patents of his own initiative; in practice, this could be prompted by an opinion that the patent is invalid.

Other declaratory relief
There is no statutory method for third parties to seek declarations of non-infringement in respect of trade marks and designs. However, the court has a general discretion to grant declaratory relief when it considers it appropriate to do so. For instance, a letter of claim from a trade mark owner, alleging infringement by a third party, may be sufficient for that party to apply for a declaration under the general discretion of the court.

Licences of right
In some circumstances, a third party may be entitled to apply for a licence of the relevant IP right. In respect of patents, broadly, this applies when: (a) the patentee (by application to the Comptroller) marks the patent as having licences available as of right; or (b) the patent in question was granted more than three years before and certain circumstances exist, for instance, the invention is not already being worked to the fullest extent reasonably practicable, demand for the product is not being met on reasonable terms or an export market is not being supplied. There is also potential for a licence as of right where the Competition Commission finds that the patentee was engaged in anti-competitive conduct.

In respect of design rights, in the final 5 years of protection, a proprietor of an unregistered design is required to give a licence as of right to any person seeking one, which greatly diminishes the practical value of the protection offered by the design right.

In each case, the licence terms will be agreed between the parties or settled by application to the Comptroller or intellectual property office.

Prior use
In respect of patents and designs, if a third party performed a potentially infringing act, or made effective and serious preparations to do that act, prior to the date of the application for the design or patent (in respect of patents, the relevant date is the priority date), the third party is entitled to continue that use. However, there are practical limitations on the third party's right to make changes to its product or process in the future.

In respect of trade marks, honest concurrent use and prior use in a particular locality can entitle a third party to continue that use. In respect of use in a particular locality, the third party would not be entitled to extend its use to cover other localities.

South Africa Small Flag South Africa

Patents
A patentee may apply to the Registrar of Patents for a patent to be endorsed ‘licences of right’. If granted, any person who wants a licence will be entitled to one as of right. Compulsory licences for patents are also available on application to the Commissioner.

Designs
Compulsory licenses for design registrations are available on application to a High Court.

Plant Breeders’ Rights
Compulsory licences can be granted by the Registrar under certain circumstances. Declaratory relief provided by a court should also be available.

A person who procured any propagating material of a variety in a legitimate manner shall also not infringe the plant breeder's right in respect of the variety if he or she –

  1. resells that propagating material;
  2. subject to the provisions of the Act, sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;
  3. uses or multiplies that propagating material in the development of a different variety;
  4. uses that propagating material for purposes of bona fide research;
  5. uses that propagating material for private or non-commercial purposes; or
  6. is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.

Trade Marks
A trade mark registration may be partially cancelled and the specification of goods/services may be restricted. A trade mark registration may be limited by recording a disclaimer against certain elements of the trade mark.

UAE Small Flag UAE

UAE national patents, utility certificates and designs: where the patent has not exploited at all, or has not been sufficiently exploited, within three years from the date of grant, a compulsory licence may be granted. The applicant for the compulsory licence must show that over a reasonable period efforts have been made to obtain a licence for adequate compensation, under fair terms. Where the patent relates to semi-conductors, further limitations will apply. A compulsory licence may also be granted where the invention is important to the public interest.

A compulsory licence may not be granted where the owner justifies his position with lawful reasons.

Further defences available for patent infringement only, are where the right is being used for non-commercial or non-industrial purposes, or for scientific research purposes.

UAE trade marks: The court may, based on an application by a concerned person, order the addition of any information in the register that has been omitted from it, or to remove or amend information stated in the register if it was entered unlawfully or is inconsistent with the truth. The Ministry can do these things of its own volition.

UAE copyright: The court may, based on an application by a concerned person, order the amendment of any information in the register. Any interested person may request the Copyright Section to correct any material error made in any registration.

The law provides for permitted acts as outlined in Section 26 above.

GCC patent: where the patent has not been exploited at all, or has not been sufficiently exploited, within three years from the date of grant, a compulsory licence may be granted by the Board of Directors of the GCC PO. The applicant for the compulsory licence must show that over a reasonable period efforts have been made to obtain a licence for adequate compensation, under fair terms. Where the patent relates to semi-conductors, further limitations will apply. A compulsory licence may also be granted where there is a state of emergency, a dire public necessity, or for non-commercial use.

Updated: June 27, 2017