COMPULSORY LICENCES IN CASES OF ABUSE OF PATENT RIGHTS
The
Patent Act provides for grant of a compulsory licence against a
patent to any person who can show that the rights in the patent
are being abused.
The
rights in a patent are deemed to be abused if:
a) The
invention is not being worked in the Republic on a commercial scale
and there is no satisfactory reason for the non-working, (grace
period: 3 years after grant / 4 years after application).
b) Demand
for the patented article in the Republic is not being met to an
adequate extent and on reasonable terms;
c) By
reason or refusal of the patentee to grant a licence on reasonable
terms the trade, industry or agriculture of the Republic or any
class of persons in the Republic is being prejudiced and it is in
the public interest that a licence should be granted;
or
d) The
demand in the Republic for the patented article is being met by
importation and the price charged is excessive in relation to the
price charged in the country of manufacture.
We
can advise on further detailed provision of the Act, if required.
If
you are not yet working or about to work the invention in South
Africa and if you are concerned about the implications of the above,
the following procedures may be considered by you:
1. NOMINAL WORKING
In
cases where actual working of the
invention is not carried out in South Africa, the practice has arisen
of "nominal working",
comprising the placing of advertisements offering a licence on reasonable
terms. The value of
"nominal working" has not been tested in our Courts
but the opinion of the profession on the whole is that it may provide
at least a prima facie rebuttal of some of the grounds for grant
of a compulsory licence. The fee for the service of nominal working
is normally USD 261.00 plus the cost of the actual advertisements
in two trade journals.
2. ACTIVE LICENSING
If
the patentee is actively interested in obtaining licenses we may
be able to make appropriate proposals on how to assist the patentee
if we are given the following information:
i) How well developed is the invention and what know-how is available
?
ii) Is
the invention already being successfully exploited elsewhere, and
if so, how, where, and on what
scale ? Please supply full details, brochures, etc.,
if possible.
iii) What
attempts, if any, have already been made to commercialise the invention
?
(a) In South Africa (who has been approached
?)
(b) Elsewhere ?
and
what reaction has been received ?
We
shall be glad to be of assistance regarding any aspect of the above,
and we look forward to receiving your instructions herein.
