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?
When an interested person has made unsuccessful attempts to be granted a contractual license by the holder under fair terms, the person may request from the Patent Office to be granted a compulsory license for the use of an invention protected with a patent.
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.
Protective letter (Schutzschrift)
When a party suspects that a counterfeit seizure is imminent, it may request to be heard by the competent judge by means of a protective letter (Schutzschrift). Such letter aims at preventing ex parte counterfeit seizures or to limit its effects. It is common practice to send such a letter under sealed envelope with a request to be opened if and when an IP rights holder files a request for counterfeit seizure.
Courts have a general discretion to grant declaratory relief when they consider it appropriate to do so. A declaration of non-infringement may be requested by any interested party by means of a claim or counterclaim in proceedings inter partes.
Licenses of right
Public authorities may grant mandatory licenses on patents for reasons of (i) lack of or insufficient commercialisation within three years following the grant of the patent (or within four years following the patent application, if the patent was granted within a year), (ii) significant economic value of a more recent patent or plant variety, (iii) the existence of a compulsory license on a plant variety right which is needed to commercialise a biotechnological patent. With respect to healthcare products, mandatory licenses may also be granted for public health reasons. With respect to semiconductor technology, a compulsory license under (i) and (ii) may only be granted after a competent court has determined that such license is aimed at avoiding anti-competitive behaviour. A mandatory license may be limited in time or cover only part of the invention.
Public authorities may also grant mandatory licenses on plant variety rights for reasons of (i) public interest, (ii) allowing a patent holder of a biotechnological invention, which represents significant technical progress of substantial commercial value, to commercialize its invention, (iii) the existence of a mandatory license on a patent which is needed to commercialize the plant variety right.
In respect of patents, a party in good faith who used or possessed the invention before the patent’s priority date may continue to commercialise the invention in its personal capacity.
In respect of trademarks, prior use of the sign as a commercial name in a particular geographical location may allow a party to continue that use without the possibility to extend its use to other locations.
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.
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.
R: Yes, both are possible.
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.
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.
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
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.
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.
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.
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.
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.
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 –
- resells that propagating material;
- 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;
- uses or multiplies that propagating material in the development of a different variety;
- uses that propagating material for purposes of bona fide research;
- uses that propagating material for private or non-commercial purposes; or
- 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.
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 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.
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.”
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.
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. 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 reselling.
Declaratory reliefs i.e. a judgment of a court which determines the rights of parties without ordering anything be done or awarding damages are available under Swiss law.
Inventions and utility models: The owner may file a declaration within UA PTO for full or partial relief his patent rights. This procedure is not allowed without a notification of the licensee of registered license agreement as well as in case of seizing the property containing patent rights because of debts. If an invention (utility model) is not (or insufficiently) used within 3 years any person who is ready and wishes to use an invention (utility model) may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner of earlier patent must grant the permission (license) to use an invention (utility model) to the owner of later patent, provided that later patent is intended for other purpose or has significant technical and economic advantages when later patent may not be used without infringement of rights of the owner of earlier patent.
Trademarks: The owner may file a declaration within UA PTO for full or partial relief his trademark rights. The certificate may be terminated by the court if a mark becomes commonly used for goods and services of a certain type after the filing date of application. The certificate may be fully or partially terminated by the court if a mark is not used in Ukraine with respect to all (or part of) goods and services listed in the certificate within three years without a valid reason.
Industrial designs: The owner may file a declaration within UA PTO for full or partial relief his design rights. If a design is not (or insufficiently) used within 3 years any person who is ready and wishes to use a design may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner of earlier design must grant the permission (license) to use a design to the owner of later design, provided that later a design is intended for other purpose or has significant technical and economic advantages when later design may not be used without infringement of rights of the owner of earlier design.
Semiconductor topographies: If a topography is not used within 3 years any person who is ready and wishes to use a topography may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason.
Plant varieties: If a variety is not used within 3 years any person who is ready and wishes to use a variety may appeal to the court for granting the compulsory license provided that the owner refuses the concluding of a license agreement without a valid reason. The owner may file a declaration within the competent authority for relief his economic rights. This procedure is not allowed without a consent of the licensee. In case of relief the owner must inform an author as he has the preference to obtain these rights.
Copyright: the effect of intellectual property rights to copyrighted works can only be limited by permitted use cases as prescribed by the laws (i.e. exceptions and limitations).
It is also possible to request the prior use rights by filing the claim to the court for inventions, utility models, industrial designs, trademarks.
Design rights, trademark rights and patent rights may be documented through an agreement for issuing an exclusive or non-exclusive license right to a third person. The limitations of the use of the right shall be determined according to the license agreement and license shall not be exclusive unless otherwise provided in the agreement. The rights arising from the license cannot be assigned and sub-licensed to another party. In case of exclusive licenses, the licensor shall not be entitled to grant license to third parties and it cannot use the trademark itself unless it explicitly reserves any such right. As for non-exclusive licenses, the licensor may use the trademark itself and issue other licenses to third persons. Also, the patent right may be restricted through a mandatory license under certain conditions.
Any interested party may bring an action against the owner of an IP right, so that the competent judge declares that a particular action does not constitute an infringement of that IP right.
The interested party, prior to the filing of the claim, shall reliably require the owner of the IP right to pronounce himself on the possible infringement. After one month from the date of the request without the owner of the IP right had pronounced or when the applicant is not satisfied with the response, may exercise the negatory action.
The claim must be notified to all persons holding rights duly registered in the corresponding Register, in order for them to be able to appear and intervene in the process. However, contractual licensees shall not be able to appear on the court when their license agreement so provides.
The person who foresees the filing of an application for precautionary measures without a prior hearing against him, may appear in legal form before the judicial body or bodies that he considers competent to hear of such possible measures and justify his position by means of a preventive writ.
The patent owner is not entitled to prevent a third party in good faith from continuing or commencing working the patent or from making preparations in the same manner as before in such a way as to meet the reasonable needs of their business if the said third party, before the patent's priority date, had exploited the patented invention in Spain or had made serious and specific preparation to exploit the said invention.
Yes, declaratory relief.
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.