Compulsory license

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A compulsory license is a state-ordered restriction of the effect of a property right . Such a restriction has the consequence that the owner of the property right cannot or only partially assert the resulting privileges.

Legal basis

The German Patent Act in its version of 1877 provided for a judicial withdrawal of patents in order to be able to force a patent holder to issue licenses in cases of public interest. Since 1911, a compulsory license that can be enforced in court has been provided for in the German Patent Act. In 2005, the requirement of public interest for holders of dependent property rights no longer applies.

Compulsory licenses are standardized in § 24 PatG. The utility model law refers in § 20 to the corresponding regulations of the patent law. As far as patents are mentioned in the following text, utility models are also meant.

In Austria, Sections 36 and 37 of the Patent Act regulate the compulsory license, in Switzerland Articles 36, 37, 39, 40, 40a, 40b, 40c of the Patent Act.

A further legal basis for compulsory licenses was established for the European Union by the EU Compulsory Licensing Regulation (Regulation (EC) No. 816/2006 on compulsory licenses for patents in the manufacture of pharmaceutical products for export to countries with problems in the area of ​​public health from 17 May 2006). It does not cover utility models. In terms of procedural law, the regulation for Germany is implemented in Section 85a PatG.

Articles 17 to 23 of the Euratom Treaty also provide for the possibility of compulsory licenses.

Compulsory licenses can arise indirectly from other legal sources, in particular from antitrust law .

requirements

general requirements

In order to be able to obtain a compulsory license, a license seeker must first have unsuccessfully tried to obtain a license from the owner of the property right.

Furthermore, the property right must already have effect. In the case of a patent application, no property right has been created before it is granted, so a license for its use cannot be requested.

The license seeker himself must have the ability and the will to use the property right for his own account. A compulsory license cannot be granted in favor of third parties.

If these conditions are met, there are two conditions for issuing a compulsory license:

  • The license seeker has a property right that is dependent on the license to be licensed and represents a significant further development of the technology
  • There is a public interest in obtaining a compulsory license.

Public interest

The prerequisite for the public interest is a general clause that needs to be interpreted . The content of the term must be adapted to social change by considering the individual case. The public interest must be so great that it justifies the serious interference with a property right. Of the cases in which the public interest was affirmed, two are particularly relevant:

Market entry barrier through a standard dependent on property rights

This case is based on antitrust law, in particular the Act against Restraints of Competition (GWB).

If the use of an industrial property right is necessary in order to use an industry standard or a standard-like agreement, then the proprietor of the industrial property right could arbitrarily exclude market participants from the market served by the industrial standard. This right is a fundamental part of the effect of a property right. In addition to the “reward”, the monopoly for the owner of the property right, the aim of a property right is to encourage competitors to find other solutions to a problem that are not affected by the property right if licensing - for whatever reasons - is not possible .

However, if a market participant is forced to use a property right by a norm or an agreement that is beyond his control, he does not have the option of using alternative solutions. If he is not allowed to use the property right, he will be excluded from his market. As a result, the owner of the property rights, if granted, could arbitrarily keep competitors away. This goes against the public interest, which is to have a functioning competition. In the present case, this outweighs the public interest in the reward of technical advancement.

If there is an antitrust claim to a compulsory license, this can be asserted by way of objection in the infringement process. In patent law practice, this claim has become particularly important, as protected technologies are increasingly taken into account when setting standards.

General health care

There is also a public interest in the fact that medical healing processes and drugs should in principle (in the legal sense) be accessible to everyone. This accessibility is not given by the fact that a healing process or a drug is subjectively offered too expensive. Rather, there must be a particularly high benefit, for example because common diseases can be treated for the first time with good prospects of success, the domestic market is insufficiently supplied or if the drugs have new therapeutic properties that could not previously be achieved or only with side effects. However, there is no public interest if the therapeutic result can be achieved with other, more or less equivalent, alternative preparations.

Other examples

Other cases in which the public interest was affirmed concerned increasing operational safety and safeguarding jobs, preventing large-scale layoffs due to the endangerment of branches of industry and ensuring an uninterrupted supply of electricity.

Procedure and judgment

The patent law stipulates that a compulsory license can be obtained by filing an action before the Federal Patent Court ; A nullity senate is responsible (the 3rd Senate). This action must be directed against the owner entered in the register, not against an exclusive licensee.

A claim under antitrust law, on the other hand, must be brought before the ordinary courts .

The scope of the compulsory license must be specified in the judgment. A compulsory license can be comprehensive or restricted. A time limit or a restriction to a specific claim is conceivable. It is also possible to include a subsequent condition, for example in the event that the domestic supply situation improves.

The compulsory license can also be granted by way of an injunction by the Federal Patent Court (Section 85 PatG). This happened in August 2016 in the case of the drug Isentress with the active ingredient raltegravir and was confirmed by the Federal Court of Justice on July 11, 2017 .

Effects

The compulsory license gives the licensee the right to use the property right. In return, he has to pay appropriate compensation.

If the compulsory license is granted for an older patent on which a later patent of the licensee is dependent, the owner of the older patent can request a counter-license from the licensee.

In the case of license agreements concluded voluntarily, it is usually agreed that the license agreement should be terminated if the licensee attacks the property right, e.g. B. with an action for annulment . This restriction does not apply to a compulsory license.

Compulsory license in copyright law

In § 42a of the Copyright Act (Copyright Act) a compulsory license for record companies is provided. As soon as an author grants a phonogram manufacturer a right of use to reproduce and distribute the protected work, he must also grant this to every phonogram manufacturer who has a seat within the scope of the UrhG under reasonable conditions.

This does not apply to authors who have given the rights of use to a collecting society .

Compulsory right of use / compulsory license in plant variety protection law

The “Plant Variety Protection Law” also knows compulsory licenses (referred to as “compulsory use right” in the German Plant Variety Protection Act; §§ 12, 12a Plant Variety Protection Act). The Council Regulation No. 2100/94 (EC) on Community plant variety protection, which has been amended several times since then, regulates the issuing of compulsory licenses for European plant variety rights in its Article 29, the procedure is determined by Articles 37 to 44 of the implementing regulation issued for this purpose.

In Austria , Section 6 of the Plant Variety Protection Act regulates the compulsory license to Austrian plant variety rights.

In Switzerland , Articles 22 and 22a of the Plant Variety Protection Act provide for a license in the public interest and a license for the patent that is dependent on plant variety protection law.

The importance of compulsory licenses in plant variety protection law has so far been close to zero.

Individual evidence

  1. ↑ Dietrich Scheffler: The (unused) possibilities of the legal institution of the compulsory license. In: GRUR . 2003, p. 97 ff.
  2. ^ OJ EG L 157/1 of June 9, 2006.
  3. ^ Consolidated version of the Treaty establishing the European Atomic Energy Community . In: Official Journal of the European Union C 84, 30 March 2010, pp. 1–112.
  4. ^ BGH, judgment of June 3, 1970 - X ZB 10/70, printed in GRUR 1972, 471 - Cafilon
  5. ↑ Text of the Act against Restraints of Competition
  6. ↑ BGH , judgment of July 13, 2004 "Standard-Spundfaß", file number KZR 40/02, in BGHZ 160, 67 and GRUR 2004, 966
  7. ^ BGH, judgment of May 6, 2009 "Orange Book Standard", file number KZR 39/06; see article Orange Book Judgment
  8. ^ Daniel Antonius Hötte: The antitrust compulsory license claim in patent law. Münster 2011, online ( memento from June 26, 2011 in the Internet Archive )
  9. ^ Judgment of the BPatG of June 7, 1991, file number 4 Li 1/90 (EU); Printed in BPatGE 32, 184
  10. ↑ § 24 IV PatG
  11. ^ Judgment of the Federal Court of Justice of December 5, 1995, "Polyferon", file number X ZR 26/92; Printed in GRUR 96, 190.
  12. ↑ a b see judgment of the BGH of December 5, 1995, "Polyferon", file number X ZR 26/92; Printed in GRUR 96, 190.
  13. ^ Schulte, "Patentgesetz", 6th edition. Section 24, marginal number 14
  14. ↑ BGH judgment of July 11, 2017 - X ZB 2/17 “Raltegravir”, printed and published. a. in GRUR. 2017, 1017, available on the Internet at http://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=536be51d536aab3532c89314291160ef&nr=79269&pos=0&anz=1 (accessed on November 4, 2017)
  15. ↑ § 24 II sentence 2 PatG
  16. ↑ OJ. EC No. L 227 of September 1, 1994.
  17. ↑ See Herbert Leßmann, Gert Würtenberger: German and European plant variety protection law. Manual. 2nd Edition. Nomos, Baden-Baden 2009, ISBN 978-3-8329-4027-0 , § 3 Rn. 77; Alfred Keukenschrijver: Plant variety protection. 2nd Edition. Carl Heymanns Verlag, Cologne 2017, ISBN 978-3-452-28857-8 , § 12 SortG Rn. 4; Barudi. In: Axel Metzger, Herbert Zech: Plant variety protection law. Comment. CH Beck, 2016, ISBN 978-3-406-68445-6 , §§ 12, 12a SortG Rn. 4th