Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Intellectual Property (2nd edition)
Patent – Compulsory licenses are provided by Russian patent law (see Section D (13). Any person who before the priority date of an invention, utility model or industrial design had in good faith used an identical solution, which was created independently of the inventor, or a solution that only differs from the invention by the equivalent features, or made the necessary preparations for such use, shall retain the right of further free use of the identical solution, provided that the scope thereof is not enlarged. Thus, in a patent infringement case, a defendant may either raise a defence based on his right to prior use of the patented solution or submit a nullity action against the patent allegedly being infringed, provided that the information of prior use of his solution has become publicly available before the priority date thereof.
Trademarks – The owners of identical or similar marks may voluntarily sign a coexistence agreement on the division of territory or special use. In such agreements, parties usually undertake to refrain from deriving any rights from the registrations and use of their trademarks against each other, particularly not to raise objections and oppositions.
Faced with a formal threat of action for intellectual property infringement, a person can apply to court for a declaration of non-infringement.
As regards patents, pursuant to the article L.615-9 of the IPC, 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 the article L.613-11 of the IPC, 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 the article L714-5 of the IPC, 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.
Declaratory reliefs are available. Moreover, compulsory licences on a patent may be granted in certain cases where the efforts by the applicant to obtain a contractual licence on appropriate market terms within a reasonable period of time have been unsuccessful. Such compulsory licences are in relation to the field of semiconductor technology, research tools, diagnostic tools and export of pharmaceutical protection.
Copyright law provides for a compulsory licence, against remuneration, for manufacturers of phonograms.
For plant varieties protection rights, a compulsory licence may be granted to a person whose licence request was rejected without sufficient ground, provided that there is a public interest.
Polish law does not provide any measures similar to declaratory reliefs or "Arrow" declarations available in English law. An entity wishing to resolve an issue of potentially infringing a third party right can file a motion to the civil court to determine whether such a legal relationship exists. This measure is rarely used for this purpose in practice, as it may backfire, causing trouble to the applicant if the court finds that an infringement is likely.
In limited circumstances, it is possible to apply to the Patent Office to grant a compulsory licence for a third party patent or utility design. This measure is mostly intended for situations where using the right is necessary for national security purposes or to prevent an emergency, but can be also used if the right is abused or in cases where a holder of a prior patent refuses to grant a licence to the holder of a dependent patent, with this preventing the party to satisfy the market demand for a product.
Polish law recognises prior use as a circumstance limiting the effect of a third party IP right (patent, utility model, design, or trade mark). In general, prior use occurs when a party had been using a certain subject of rights (invention, mark, etc.) before a different party has applied for registration of such rights in its name. Prior users may continue using their subjects of rights despite such registration, but may not expand the scope of such use.
In Italy a method frequently used to remove the effect of the IP rights (particularly for trademark and patent) are the non-declaratory infringement claim. In other words, the potential defendant may start interim proceedings or proceedings on the merits requesting to the Court a declaration that its conduct or activities do not infringe the IP rights at hand and a compensation for damages eventually suffered.
The prior use represents another case where the effect of the IP rights may be limited. As for the prior use of an unregistered trademark, under art. 2571 Italian Civil Code and art. 12 IPC the owner of an unregistered sign which has been used before the registration of the second trademark, may keep going on using the unregistered trademark provided that this sign (i) is not well-known, or (ii) is well-known only locally. As for the prior use of an invention identical to patented invention, under art. 68(3) IPC whoever has used the invention within the period of 12 months before (i) the filing of the patent application or (ii) the priority date, may keep going on using the said invention in the same manner and with the same limits as before.
Finally, we should consider also the compulsory licenses. In Italy, the IPTO may grant compulsory license when (i) the patent holder does not exploit the rights arising from the patent within 3 years from the granting or 4 years from the filing patent, or when (ii) the patent holder cannot exploit its rights because of the existence of a prior patent; therefore the holder of the second patent may be granted a compulsory license of the first patent (Article 70-73 IPC).
For patents, there is a provision for grant of a compulsory license under a patent as described on section 13 above.
In respect of trade marks, a trade mark may be removed from the Register if it is not genuinely used in bona fide manner in Cyprus by the registrant, during five consecutive years, unless the non-use is due to legitimate reasons.
The court may cancel the registration of a design which is in conflict with a prior design, which has been made available to the public after the filing of the application for registration, or where priority is claimed, after the date of priority of that other design, and which is protected from a date prior to the said filing date, or as the case may be, the said priority date by a design right in Cyprus or a Member State, or an application for registration in Cyprus or a Member State.
Yes, declaratory relief.
The owner of a trademark may request the total or partial cancellation of a registration or application. The partial cancellation is that regarding some of the products or services protected by the right, while the total cancellation contemplates the complete renunciation of the holder on his right.
Declaratory relief is generally not available in Greece.
Compulsory licenses are allowed, in connection with invention-related rights on specific grounds.
In the UK, the legislation prohibits the making of unjustified threats of patent, design or trade mark infringement proceedings in respect of an act done, or proposed to be done, in the UK. The regime permits more to be said against alleged primary infringers (e.g. those making, importing, applying a mark) without engaging the tort than it permits to be said against parties whose alleged infringements are confined to secondary acts (e.g. selling). The regime can be employed by potential alleged infringers as a way to resolve issues of infringement.
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 does not provide the declaration sought, 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.
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.
Declaratory reliefs i.e. removing or limiting the effect of IP rights can be granted by the court upon filing a petition by an aggrieved party. Furthermore, the IP rights may also be restricted/transferred to the licensee by entering into a license agreement.
The intellectual property competent authority has the power to grant compulsory licenses for the use of Intellectual right due to the following causes: (i) when the owner of those rights has negatively affected the free competition, (ii) when the rights holder of a musical piece has granted the authorization to perform that musical piece or recording to another and there in no possibility that a third person can obtain another authorization to perform it, (iii) when a literary or artistic work is not translated into spanish or other intercultural languages of the national territory, (iv) when a literary or artistic work is not available in the national market and several years have passed since its publication (three years for scientific or technological works; five years in general content works; and seven years in works regarding novels, poetry or art books); and, (v) when an audiovisual work, videogram or other audiovisual fixation is not available or accessible in the national market and has passed at least a year since its diffusion on any format.
Regarding patents, the intellectual property competent authority can also grant compulsory licensees due to lack of use of the patent for the period of three years since it was granted or for four years since it was requested (the higgest); while regrind plant varieties, when the breeder of a plant variety cannot exploit a breeder´s certificate without violating the rights resulting from a patent of invention, a compulsory license might be granted to use that patent if it is necessary to exploit that plant variety (compulsory licenses can also be granted regarding plant varieties if they are necessary to exploit an invention patent). Compulsory licenses might also be granted for layout designs due to lack of exploitation.
Sometimes alleged infringers are able to assert that they have rights to intellectual property without an explicit license. For example, an employee who develops an invention using the equipment and facilities of the employer may effectively grant the employer a license to use that invention based on the common law “shop right” of the employer.
Any interested person can request by instituting proceedings against the owner of the patent that the Court declare that the performance of a specific act does not constitute an infringement of the patent, which when proven, the Court shall grant the declaration of non-infringement.
A compulsory licence allows third parties other than the patentee to exploit the patent in a number of situations. There are three types of compulsory licences:
(a) Compulsory licences which are granted due to the act or inaction of the patent owner that is against public interest;
(b) Compulsory licences which are granted on the basis of inter-dependence of patents and
(c) Compulsory use of the patent by the Government.
Any person may apply to the court for the grant of a compulsory licence in respect of the industrial design on the ground that the industrial design is not applied in Malaysia by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case. The court may make such order on the application as it considers just.
There is no declaratory relief in the IPO. Outside of an actual controversy before it, the IPO will not issue a declaration as to the rights to the subject intellectual property or the rights of the parties thereto.
Declaratory relief may be available in the regular courts, as Rule 63 of the Rules of Court allow any person “interested under a deed, will, contract or other written instrument, or whose rights are affected by a statute, executive order or regulation, ordinance, or any other governmental regulation” to “before breach or violation thereof bring an action in the appropriate Regional Trial Court to determine any question of construction or validity arising, and for a declaration of his rights or duties, thereunder.” However, outside of this narrow ground, courts will require an actual case or controversy before proceeding to declare the extent of the rights over intellectual property.
Intellectual property may be assigned or licensed as with any property. However, in the case of licensing, the same must comply with Sections 85 to 92 of the IP Code, which contains the rules on voluntary licensing. These rules pertinently include mandatory and prohibited provisions, which must be complied with, subject to exceptions; otherwise, the licensing agreement will not be enforceable by a court in the Philippines.
There is also compulsory licensing under Sections 93 to 102, whereby upon petition, the Director of the BLA of the IPO may grant a license to exploit a patented invention, even without the agreement of the patent owner, under conditions such as national emergency, or if the exploitation of the owner is anti-competitive, among others. Notably, compulsory licensing may also be mandated when “the demand for patented drugs and medicines is not being met to an adequate extent and on reasonable terms, as determined by the Secretary of the Department of Health.”
In cases where it is effective and adequate for a person who allegedly infringes on a third party’s intellectual property rights to seek a declaration of non-infringement in order to remove the danger or anxiety to the plaintiff’s legal status, the person may file a lawsuit to seek a declaratory judgment which confirms that the defendant has no claims against the person based on infringement upon the defendant’s intellectual property rights under certain circumstances.
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.
Methods to remove or limit the effect
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
Methods to remove or limit the effect
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.
Appellations of Origin
When the subject right has not been used for a minimum period of 3 years before a non-use cancellation action is lodged before the Mexican Patent and Trademark Office.
Copyright and other rights
Methods to remove or limit the effect
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 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 could be limited by a license in case of national security or public emergency.
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.
Designs: Designs can be limited by inclusion of disclaimers and/or by restricting the novelty claim of the design.
As several of the intellectual property rights are not registered under Swedish law these cannot be challenged other than as an objection in an ongoing infringement proceeding or a proceeding on non-infringement. This section will therefore only discuss challenges to registered intellectual property rights.
Trademarks and trade names
Regarding trademarks and trade names it is possible to challenge them both during the registration process as well as during its subsistence. As mentioned in question 23, the same criteria to challenge applies for both trademarks and trade names but in the following focus has been put on trademarks.
Anyone can challenge a trademark registration. Firstly, it is possible to object against an application to register a trademark. This could only be done within six months from when the application was filed with the patent and registrations office.
If the objection period has passed and the application is granted one who wishes to challenge the trademark must file an action to revoke the registration. In summary, the grounds for revocation of a trademark are (i) the mark has been registered in violation of the Trademark Act and the registration continues to violate the Act (ii) as a result of the proprietor’s acts or passivity, the trademark has become generic for the goods or services to which the registration pertains (iii) the trademark has come to violate a law or other statutory instrument, standard practice, or the public order, (iv) the trademark has been intended to mislead the general public in respect of the nature, quality, geographic origin of the goods or service, or other circumstance in respect of the goods or service, and this is a result of the use made of the trademark for the registered goods or services by the proprietor or any person acting with his or her consent, (v) the proprietor has not made actual use of the mark in Sweden for the goods or services for which it is registered for a period of five years from the date on which the question of registration was conclusively resolved, or within a period of five consecutive years.
An application to revoke a registration should be filed with the patent and registrations office. If the holder of the registration does not object to the claim the authority will revoke it. If the owner of the registration objects to the claim the applicant will be given the opportunity to choose whether to proceed with the claim. If the applicant chooses to maintain his claim the case will be forwarded to the patent and market court where the proceedings will continue.
Patents can be challenged both during the registration process as well as after a grant. Both challenges are available to anyone.
During the registration process objections can be made towards a patent once the patent and registrations office has considered that an application meets the formal criteria. This is followed by a notice to grant the patent from the authority. Once the notice to grant the patent has been made public, a period of nine months follows where others than the applicant are given the opportunity the objection.
A patent can also be challenged once the objection period has ended. In such case, an action to declare the patent invalid must be filed with the patent and market court.
In order to succeed with an invalidity claim the court must find that (i) the patent does not meet the requirements for grant, (ii) insufficient disclosure of the invention, (iii) lack of support in the application as filed or (iv) expansion of the scope after it was granted.
The court could also partially invalidate a patent but cannot transform it into a utility model since the concept of utility models is not available in Sweden.
As with other registered intellectual property rights it is possible to challenge a registered design both during the initial application procedure and when it has been registered.
If the patent and registrations office does not find any obstacle to an application, the design shall be entered into the register and a notice to that effect be published. Once the notice is published an objection can be made within two months from the publication date.
The right to object to an application to register a design is rather detailed but can be briefly summarized as follows. An objection may be filed only by (i) any person who considers himself or herself entitled to the design, (ii) any person who applies for or is the holder of the right, if the objection is based on an obstacle to the design right pursuant to section or (iii) anyone who is affected by the right.
An action to declare a registration invalid must be filed with the patent and market court within one year from the time when the claimant learned of the registration and the other circumstances on which the action is based. Where the design holder was in good faith when the design was registered or when the design right was transferred to him or her, an action may not be brought more than three years from the registration. An action to declare the registration invalid can be made by anyone that meets the criteria to object to an application.
A claim for revocation could be based on the ground that the application did not meet the required criteria at the time of the registration. Such claim could include an argument that the design is (i) dictated solely by the technical function of that product; or (ii) must necessarily be reproduced in their exact form and dimensions in order to permit the product to which the design is applied to be mechanically connected to or placed in, around or against another product so that both products can perform their functions.
Registered plant varieties
A challenge to a registered plant variety could be made both during the registration process and once an application has been granted.
If the application documents are complete and there is no impediment to the registration, the Swedish Board of Agriculture which is the authority that handles such applications will publish a notice of the application in order to give the public an opportunity to object to the application. An objection to an application must be made within two months from the authority’s notice.
An action to revoke a granted registration should be filed with the patent and market court. Such action can be based on the grounds that the plant variety did not meet the criteria for registration at the time it was registered. In brief the requisites for registration are novelty, distinctiveness, uniformity with respect to its essential characteristics and stability.
Patents - Declaratory relief is not available in Latvia. Compulsory license is provided by the patent law.
Trade marks - The owners of trademarks may agree voluntary by signing a coexistence agreement on the division of territory, special use etc.
No declaratory relief is available in Vietnam. Generally speaking, any person/organization who is exploiting or using goods/services suspected of infringement should seek expert opinion from the VIPRI or get legal advice including FTO opinion or proactively contact and negotiate right holders for a license of right then it is possible to remove or limit the effect of being handled due to infringement.
a) Declaratory relief
A negative declaratory relief for non-infringement can be filed with regard to all IP rights. The person seeking a declaratory judgment must show a legitimate interest in obtaining the declaration. Such legitimate interest may exist for example where that person has previously received a warning letter for alleged infringement in the respective case and wants to clarify that what he/she is doing, does not infringe the specific IP right.
b) Licences of right
Under certain conditions, it is possible to apply for a compulsory license, for example under Section 24 Patent Act or under FRAND principles in cases of standard-essential patents. The main field of application of compulsory licensing is patents (involving antitrust considerations). In trade mark law compulsory licenses are not admissible, because they could lead to a deception of origin. In copyright law, there are provisions for compulsory licenses, but they are of hardly any practical importance.
c) Right of prior use
As concerns patents, utility models and designs, the so called "right of prior use" is codified in Section 12 Patent Act, Section 13(3) Utility Model Act and Section 41 Design Act. The proprietor of the IP right shall not exercise rights against a third party who, before the date of filing, has in good faith commenced use in Germany, or has made effective and serious preparations to that end, of an identical invention or design which was developed independently of a registered patent, utility model or design. The third party is then entitled to use the invention / design.
d) Exhaustion of IP rights
Parallel to the IP laws of the European Union, German law also provides for provisions on exhaustion of rights. The so called exhaustion of an IP right means that a good may freely circulate after the first legitimate sale in Germany, and the legitimate IP holder cannot oppose the successive acts of use, such as reselling.
An applicant may, at the time of filing, indicate to the IPRD any exclusions or disclaimers to the exclusive use of the mark forming the subject of the application being made. It is also possible for the rights conferred by a trade mark to be subject to territorial or other limitations.
Such limitation or disclaimer will be entered into the register.
Other licences were discussed further above.
A declaratory relief for non-infringement can be filed with regard to all IP rights.
Compulsory Licensing is also a possibility, especially when analysing antitrust issues regarding IP, with specific dispositions regarding patents, as article 68 of the Brazilian IP law states that the titleholder shall be subject to having the patent licensed on a compulsory basis if he exercises his rights derived therefrom in an abusive manner, or by means thereof engages in abuse of economic power, proven pursuant to law in an administrative or judicial decision, as well as in other occasions.
Another possibility that limits the effect of IP rights is the previous good faith user, in the following terms:
Patents and industrial designs: A person who in good faith, prior to the filing or priority date of a patent application, was exploiting the object thereof in this country, shall be assured the right to continue the exploitation, without onus, in the same manner and under the same conditions as before.
Trademarks: Every person who, in good faith on the priority or filing date, has been using an identical or similar mark in this country for at least 6 (six) months to distinguish or certify an identical, similar or alike product or service shall have the right of preference for the registration.
Yes, both declaratory relief and licenses, herein compulsory licenses, are available.