The Patent Act as of 1 February 2004

The Patent Act as of 1 February 2004

[excerpts – unofficial translation]

Section 49. A compulsory licence may only be granted to a person who has made efforts to obtain a licence on reasonable commercial terms by agreement without succeeding in this within a reasonable time, and who may be presumed able to exploit the invention in a manner which is acceptable and in compliance with the terms of the licence.

A compulsory licence shall not prevent the patent holder from exploiting the invention himself or from granting licences.

A compulsory licence shall only be assignable in conjunction with the enterprise where it is exploited or in which exploitation was intended. Furthermore, a compulsory licence obtained pursuant to section 46, first paragraph, may only be assigned in conjunction with the dependent patent.

In the case of semi-conductor technology, a compulsory licence may only be granted for public non-commercial use or pursuant to section 47 (2).

A compulsory licence shall primarily be granted with a view to supply of the domestic market. The King may by regulations lay down rules that deviate from this.

Section 50. A Compulsory licence shall be granted by the court pursuant to this section or by the Norwegian Competition Authority pursuant to section 50 a.

In a decision concerning a compulsory licence, it shall be decided to what extent the invention may be exploited as well as the amount of remuneration and the other terms of the licence. The remuneration shall be adequate in relation to the circumstances of each case. Assessment shall take into account the economic value of the licence.

The Comments of the Government to the proposed Amendments in Section 49, ref. 86 (2002-2003)

The amendments to the first paragraph have been made in order to clarify the requirements for the granting of compulsory licences in article 31 (b), first sentence, of the TRIPS agreement.

Although it is the point of departure of the TRIPS Agreement that an attempt must have been made to obtain a voluntary licence before a compulsory licence can be claimed, see article 31 (b) and section 49, first paragraph, of the Patents Act, the article allows exceptions to be made in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. The third and fourth sentences of article 31 (b) lay down requirements that the right-holder shall be notified in such cases. The rules concerning these exceptions have not been included in the draft amendenment of section 49 of the Patents Act since they would take up a disproportionate amount of space. It is assumed that the requirement stated in section 49, first paragraph, may be interpreted restrictively if the need should arise to exploit the freedom allowed by the TRIPS agreement in relation to this point.

The current section 49, fourth paragraph, provides that a compulsory licence for exploitation of patented semi-conductor technology may only be granted for public or non-commercial use or to remedy practice determined after judicial or administrative process to be anti-competitive. It is proposed that the latter alternative be removed. The proposed amendment provides instead that a compulsory licence may be granted pursuant to section 47 (2). This is done in order to harmonize the provision with the new section 47 (2).

Article 31 (f) of the TRIPS agreement lays down that a compulsory licence shall primarily be granted with a view to supply of the domestic market. This is not explicitly stated in the current Patents Act. It is proposed that the condition be included as a new fifth paragraph, first sentence, of section 49.

The authority laid down in the fifth paragraph, second sentence, to issue rules that deviate from this condition is provided primarily with a view to the ongoing negotiations in the TRIPS Council concerning use of a compulsory licence in order to ensure supplies of pharmaceuticals to developing countries. The condition that a compulsory licence shall mainly be granted with a view to supply of the domestic market entails that countries that lack domestic production capacity may experience difficulties in exploiting the right to grant a compulsory licence. This particularly affects the developing countries. Dependent on the outcome of the negotiations associated with the TRIPS agreement, it may be possible that in the future companies in Norway would produce compulsorily licensed pharmaceuticals for export to developing countries. The authority to grant exceptions from the requirement laid down in section 49, fifth paragraph, first sentence, provides for such a situation.

The fifth paragraph, second sentence, also provides authority to sharpen the requirement laid down in the first sentence. It may, for example, be laid down that a compulsory licence shall in certain cases be granted exclusively with a view to supply of the domestic market.