Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?
Intellectual Property (3rd edition)
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.
Licencing of rights or declaratory reliefs may serve as methods to remove or limit the effect of the intellectual property rights. In response to a claim for infringement, the defendant may seek a declaratory judgment that the relevant intellectual property right cannot serve as basis for prohibiting the alleged infringing acts.
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.
A third party seeking market entry may apply for a declaration from the Court that its proposed conduct or goods does not infringe a particular patent or registered industrial design.
The Court may also grant a compulsory license to work a patented invention where it is necessary to remedy an anti-competitive practice. For instance, such a compulsory license may be ordered where there is a market for the patented invention in Singapore and the patented proprietor has no valid reason for failing to supply this market on reasonable terms.
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.
(1) Declaratory relief: Where a patent holder sends a warning to others for infringing a patent and where the patent holder neither withdraws the warning nor files a lawsuit within one month upon receiving a written reminder in which the person warned or the interested party urges the patent holder to exercise the right of action, or within two months upon issuing the written reminder, the courts shall accept the case if the person warned or the interested party files a request for a declaratory judgment action for non-infringement.
(2) Compulsory licensing: under any of the following circumstances, the patent administration department, upon the request of an entity or individual which is qualified to exploit the invention or utility model, grant a compulsory license: 1) where the patentee, after three years from the date of grant and four years from the date of filing, does not exploit or sufficiently exploit the patent without any justified reasons; 2) where the exercising of the patent right by the patentee is legally determined as monopoly.
Cancellation can be filed based on non-use in three consecutive years or claim of generic name to removal the effect. Establish exclusive license to exclude the registrant of trademark to use the licensed trademark to limit the effect. Recordal of change/termination of recorded licence to removal or limit the effect of the license.
Copyright: (1) Independent creation; (2) contractual limitations or exclusive license; (3) fair use.
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 free competition, (ii) when the rights holder of a musical piece has granted the authorization to perform or record that musical piece to another and there is 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 any other intercultural language 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 work; five years in general content work; and seven years for novels, poetry or art books); and, (v) when an audiovisual work, videogram or any 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 licenses due to lack of use of the patent for three years since it was granted or four years since it was requested (the highest); while regrind plant varieties, when the breeder of a plant variety cannot exploit a breeder´s certificate without violating the rights resulting from an invention patent, 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.
Compulsory licenses are possible in terms of the Patents Act.
In terms of Section 56 of the Act, any interested person who can show that the rights in a patent are being abused may apply to the Commissioner in the prescribed manner for a compulsory licence under the patent.
The rights in a patent shall be deemed to be abused if –
the patented invention is not being worked in the Republic on a commercial scale or to an adequate extent, after the expiry of a period of four years subsequent to the date of the application for the patent or three years subsequent to the date on which that patent was sealed, whichever period last expires, and there is in the opinion of the Commissioner no satisfactory reason for such non working;
the demand for the patented article in the Republic is not being met to an adequate extent and on reasonable terms;
by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry or agriculture of the Republic or the trade of any person or class of persons trading in the Republic, or the establishment of any new trade or industry in the Republic, is being prejudiced, and it is in the public interest that a licence or licences should be granted; or
the demand in the Republic for the patented article is being met by importation and the price charged by the patentee, his licensee or agent for the patented article is excessive in relation to the price charged therefore in countries where the patented article is manufactured by or under licence from the patentee or his predecessor or successor in title.
Similar provisions apply under the Designs Act for compulsory licenses:
In terms of Section 21 of the Act, any interested person who can show that the rights in a registered design are being abused, may apply to the [High] court in the prescribed manner for the granting of a compulsory licence in respect of the registered design.
The rights in a registered design shall be deemed to be abused if -
(a) articles embodying the registered design are not available to the public in the Republic on a commercial scale or to an adequate extent after the registration date, and there is in the opinion of the court no satisfactory reason therefor;
(b) the availability of articles embodying the registered design in the Republic on a commercial scale or to an adequate extent is being prevented or hindered by the importation of such articles;
(c) the demand for the articles embodying the registered design in the Republic is not being met to an adequate extent and on reasonable terms;
(d) by reason of the refusal of the registered proprietor to grant a licence or licences upon reasonable terms, the trade or industry or agriculture of the Republic or the trade of any person or class of persons trading in the Republic, or the establishment of any new trade or industry in the Republic, is being prejudiced, and it is in the public interest that a licence or licences should be granted; or
(e) the demand in the Republic for the articles embodying the registered design is being met by importation and the price charged by the registered proprietor, his licensee or agent for the said articles is excessive in relation to the price charged therefor in countries where the said articles are manufactured by or under licence from the registered proprietor or his predecessor or successor in title.
The Plant Breeder’s Rights Act also makes provision for a Compulsory License.
In terms of Section 26 of the Act, any person who is of the opinion that the holder of a plant breeder's right unreasonably refuses to grant him a licence, or that such a holder is imposing unreasonable conditions for the issue of such a licence, may in the prescribed manner and upon payment of the prescribed fee apply to the registrar for the issue to him of a compulsory licence in respect of the relevant plant breeder's right.
The holder of such plant breeder's right may within the prescribed period and in the prescribed manner lodge a counter-statement with the registrar in which are set out the particulars of any ground upon which he contests the application in question.
The holder of such plant breeder's right shall serve a copy of the counter-statement on the person who made the application and shall furnish the registrar with proof of the service thereof.
If the person who made the application and the holder of the relevant plant breeder's right at any stage after the application has been lodged with the registrar, reach an agreement with regard to the issue of a licence, the person who made the application shall inform the registrar of the agreement, whereupon the application shall lapse.
As aforementioned, in certain circumstances, compulsory licenses may be granted in respected of patented products.
Moreover, the various grounds for invalidating or revoking or cancelling a mark or a design, are mentioned above.
Any person may, when there is a threat to his/her legal position, file a litigation seeking a declaratory judgment. Typically, when an intellectual property right owner sends a letter indicating his/her intent to enforce the right against a person, the person can file a litigation seeking a declaratory judgment (a judgment declaring that the person is not liable for damage claims or that he/she is not subject to an injunction).
Declaratory reliefs are available if there is a legal uncertainty on a potentially disputed matter and no other forms of claims are available to the claimant. 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. Compulsory licenses may also arise out of competition law constraints, e.g., if an intellectual property owner has a dominant position in the market (standard-essential patents) and is deemed to abuse his position. In such cases, compulsory licenses must be granted under fair, reasonable and non-discriminative conditions (FRAND-licenses).
Copyright law provides for a compulsory licence, against remuneration, for manufacturers of phonograms. Furthermore, Swiss copyright law provides that copyrighted software code may be decompiled and reverse engineered, if this proves necessary to establish interoperability with other software/systems that are legally used.
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.
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.
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.
It is possible to ask a district court to issue a declarative judgment holding that certain activity will not infringe a granted patent. Compulsory licenses for patents are available in extreme situations and licenses of rights are not available. Declarative judgments of non-infringement may also be obtained in respect of other IPRs.
(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.
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 Article 2571 Italian Civil Code and Article 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 Article 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).
Declaratory relief is generally not available in Greece.
Compulsory licenses are allowed, in connection with invention-related rights on specific grounds.
Trademarks: Trademarks 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.
Yes, in patents: the lack of annual maintenance payment and the compulsory licenses: from 3 years following the patent grant or 4 years following the application for the patent (whichever is longer), the Peruvian Trademark Office may grant a compulsory license if the patent had not been exploited, or if the exploitation of the invention had been suspended for more than 1 year.
In general, declaratory judgments are possible under Maltese Law. An action may also be brought against unjustified threats or claims which if successful will result in an injunction of perpetual silence being imposed on the vaunter of the claims or threats.
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 trademark to be subject to territorial or other limitations. The Comptroller may also impose and disclaim any right to the exclusive use in any specified element of the trademark. Such limitation or disclaimer will be entered into the register.
Other licences were discussed further above in the answers to questions 13 to 15.
A holder of a patent concerning a biotechnological invention cannot exploit the invention without infringing a prior plant variety right they can apply for a compulsory license for non-exclusive use of the plant variety protected by that right subject to certain requirements and a royalty payment.
Such compulsory licensing is also available to a breeder who cannot acquire plant variety protection or exploit a plant variety without infringing a prior patent, this is also subject to certain requirements and a royalty payment.
There is provision in the Patents Act for the Federal Court of Australia to make an order requiring the grant of a compulsory licence, including to exploit patented pharmaceutical inventions. This is to enable the manufacture of a pharmaceutical product in Australia for export to an eligible importing country, to address public health problems in that country.
There is also a mechanism in the Designs Act, as well as the Patents Act, that allows Australian federal, state and territory governments to access and use patented technology and registered designs without the authorisation of the patentee or a registered owner. These provisions exist to ensure that the patent and design systems do not prevent governments from acting in the public interest, although in practice these provisions are seldom used.
In general, obtaining a license to use particular intellectual property will limit the ability of the owner to file an infringement suit against a defendant. If a party is accused of infringement of an intellectual property right, that may be sufficient to trigger a case or controversy such that a court of competent jurisdiction will hear and adjudicate an affirmative declaratory judgment claim for non-infringement or invalidity of the challenged intellectual property right.