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DAMODARAM SANJIVAYYA NATIONAL LAW

UNIVERSITY

VISAKHAPATNAM, A.P., INDIA

COMPULSORY LICENCING UNDER PATENTS: LOOPHOLES AND


PROVISIONS IN INDIA, US & EU

INTELLECTUAL PROPERTY RIGHTS

NILIMA PANDA

G. NAGA LAHARI

ROLL NO: 2013048

VII SEMESTER

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ACKNOWLEDGEMENT

I consider myself lucky that I got the chance to do a work on this topic that was to
Compulsory Licencing under patents: Loopholes and provisions in India, US & EU.

I thank the subject teacher, Ms. Nilima Panda, for letting me choose the topic.

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ABSTRACT

A compulsory license is legal provision provided for in article 31 of the Trade-Related


Aspects of Intellectual Property Rights Agreement (TRIPS) of the WTO. Compulsory licenses
are defined as authorizations permitting a third party to make, use or sell a patented
invention without the patent owners consent. Under the Indian Patent Act, 1970, the
provision with regard to the compulsory licensing is specifically given under chapter XVI and
there are certain conditions to be fulfilled in order for a compulsory licence to be granted are
laid down under sections 84 and 92 of the Act. Section 84 defines that at anu time after the at
any time after the expiration of three years from the date of the grant of a patent, any person
interested may make an application to the Controller for grant of compulsory licence on
patent on any of the following grounds, namely: (a) that the reasonable requirements of the
public with respect to the patented invention have not been satisfied, or (b) that the patented
invention is not available to the public at a reasonably affordable price, or (c) that the
patented invention is not worked in the territory of India. Indias first compulsory license was
granted by the patent office to Natco pharma Ltd. For producing generic version of Bayer
Corporations patented medicine Nexavar.
Although U.S. patent law does not provide for compulsory licenses, compulsory licenses are
allowed under special legislation and under the antitrust law. The United States is probably
the country with the richest experience in the granting of compulsory licenses to remedy anti-
competitive practices and for governmental use, including national security. More than one
hundred such licenses have been granted both for present and future patents. In some cases,
moreover, the patentee was required to make the results of its research readily available to
other industry members, or to transfer the know-how.
The law regarding compulsory licensing in the European Union is no less challenging since
it is a mix of both the national law of the twenty-seven Member-States and the European
Union government sitting in Brussels. Compulsory licensing is comprised of both national
and international law in that Member-States define intellectual property protections within
their respective borders while the European Union regulates competition among the
territories of the Member-States.Specifically, Articles 34, 36, 101, and 102 of the Treaty
dictate the scope and limitations of compulsory licensing in regard to both rights and
remedies. Regulations passed by the European Council apply to the Member-States do not
provide Member States with the discretion to implement them.

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TABLE OF CONTENTS

TITLE PAGE No.


ACKNOWLEDGMENT 02
ABSTRACT 03
1. OBJECTIVE 06
2. INTRODUCTION 06
3. HYPOTHESIS 07
4. RESEARCH METHODOLOGY 07
5. COMPULSORY LICENCE: MEANING & RATIONALE 07
6. COMPULSORY LICENSING UNDER INDIAN PATENT 09
LAW
6.1.Factors taken into account for the grant of compulsory
licence
6.2.Procedure for dealing with applications for grant of
compulsory licences or revocation patents
6.3.Power Of Controller In Granting Compulsory Licence
6.4.Grant of licences where the patentee has two or more
patents
6.5.Terms and conditions of Compulsory Licences
6.6. Compulsory Licence for exporting patented
Pharmaceutical products
6.7.Termination of Compulsory Licence
7. COMPULSORY LICENCING OF US 13
8. COMPULSORY LICENCING OF EU 15
9. LOOPHOLES OF COMPULSORY LICENSING OF 16
INDIA, US & EU
CONCLUSION 17
BIBLIOGRAPHY 17
Books
Journals

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LIST OF CASES

F. Hoffmann-La Roche Ltd. And Another v. Cipla Limited, 2009 (40) PTC 125 (Del.)
Franz Zaver Huemer v. New Yash Engineers, AIR 1997 Del 79
Hartfors-Empire co. v. United States, 323 U.S. 386 (1945)
United States v. Terminal Railroad Association, 224 U.S. 383 (1912)
Eastman Kodak Co. v. Image Tech. Inc., 504 U.S. 451 (1992)
Radio Telefis Eireann & Independent Television Publications Ltd v. Commission of the
European Communities, (1995) EUECJ C-241/91
AB Volvo v. Erik Veng, (1998) EUECJ R-238/87

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1. OBJECTIVES

The paper deals with the interpretation and analysis of Compulsory Licencing under Patent
laws: Loop holes and provisions in India, US & UK.

2. INTRODUCTION

The Competition policy and Intellectual property Law intersect at the point of innovation,
efficiency, consumer welfare and economic growth; yet an inevitable chasm exsists in the
sphere of monopoly rights. The premise of IP laws is that rewarding human ingenuity,
innovation and enterprise, by granting the right of exclusive use and exploitation to the
innovator, augurs well for industrial and technical progress. Moreover, information, which is
the quintessence of future research, is brought into public domain, thereby paving way for
increased dynamic efficiency. But occasions are not few, when IPRs are exercised in a
manner which leads to attenuate the scope of competition. 1To exemplify, Exclusivity
affords an opportunity to the right holder to manoeuvre the prices in a manner which enables
her not only to recoup the R&D costs but also reap unprecedented profits. Moreover, IP
owners often engage in exclusionary conduct towards innovators and potential competitors
on markets which are secondary to and dependent upon an IPR protected industrial standard
or de facto monopoly. This anti-competitive conduct has tended to take the form of refusal
to deal or refusal to license. Such conduct whittles competition and results in fetters being
placed on the free exercise of exclusive rights granted by IP Laws. One such fetter is that of
compulsory licencing which can be seen as a potent tool for mitigating the rigours of
abuse of dominant position by arbitrary refusal to deal or license, thereby rectifying market
failure. The research paper deal with the tool of compulsory licencing. It defines the term as
well as expatiates upon its rationale, whilst delving into the question as to how it mitigates,
cures or recuperates the perils of anti-competitive activities. It offers an insight into the
American and European position, with the aid of case law, in order to explain how this tool is
put to practical application.2

1
COMPULSORY LICENSING: PRACTICAL EXPERIENCES AND WAYS FORWARD, 125(Reto M. Hilty & Kung-Chung
Liu ed., springer-verlag berlin Heidelberg, 2015)
2
BENTLEY, INTELLECTUAL PROPERTY LAW, 112 (2nd ed., Oxford University Press, New York, 2004)

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3. HYPOTHESIS

The paper deals with the compulsory licensing provisions of patent laws of India, US and EU
and also the comparative study of case laws and outcome of the paper is to find out the
loopholes of the provisions of patent to what extent.

4. RESEARCH METHODOLOGY
4.1. Research Questions
1) What is the meaning and rationale of Compulsory Licensing under the Patent Law?
2) What are the provisions of Compulsory Licensing under Indian Patent laws?
3) What are the provisions of compulsory licensing of US & EU laws?
4) What are the loop holes of the patent laws?
4.2. Sources of Data

The primary sources of data are internet source and books.

4.3. Method of Writing

The research paper is in theoretical in nature.

4.4. Mode of Citation

The mode of citation used in this paper is 19th edition of Harvard Blue Book Citation.

5. COMPULSORY LICENCING- MEANING & RATIONALE

Compulsory licenses are involuntary contracts between a willing buyer and an unwilling
seller imposed or enforced by the state. Compulsory licenses are basically the abrogation of
an IP right- an extra- ordinary legal instrument whereby the state allows itself or third party
(typically the competitor) to have access to, produce, and use or sell the IP protected product
or process without the consent of the IP owner. Such mandatory and involuntary licenses as
compelled by law may be granted with respect to patents, copyrighted works or other
exclusive rights. It is pertinent to mention that the power to enact laws on compulsory patent
licensing arises from several international agreements such as the world Intellectual Property
Organization (WIPO) Paris convention for the protection of Industrial Property, the relevant

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provisions of which were incorporated into the World Trade Organization (WTO) Agreement
on (TRIPS).3

TRIPS provide a leeway to the member states to smoothen the cases created by potential
conflict between competition policy and IP law. Articles 84, 315 and 406 deserve a special
mention. Members may adopt measures necessary to protect public health and nutrition and
to promote the public interest in sectors of vital importance to their socio-economic and
technological development. Further, TRIS handles compulsory licenses as an exception to
the agreements minimum requirement that all member states afford a patentee a right of
exclusively during the complete patent term. TRIPS tend a set of circumstances that establish
a floor at which any member state is allowed to issue compulsory license. The compulsory
licenses that are allowed fall into two categories: where there is an overriding public interest
or where the patent rights are being used in an anticompetitive manner.

In the realm of national laws, following are the examples that specify when compulsory
licenses can be issued:

Refusal to enter into a voluntary licensing agreement on reasonable commercial terms


(e.g. in the German and Chinese patent laws);
Public interest (e.g. in the Swedish law)
Public health and nutrition (e.g. provisions in the French law)
National emergency or situation of extreme urgency;
Anti-competitive practices on the part of patent holders
Dependent patents;

3
Basheer, Shamnad Indias Tryst with TRIPS: The Patents (Amendment) Act, 2005, vol.1, THE INDIAN
JOURNAL OF LAW AND TECHNOLOGY, 1242, 1257(2005).
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Article 8 of TRIPS: (1) Members may, in formulating or amending their laws and regulations, adopt measures
necessary to protect public health and nutrition and to promote the public interest in sectors of vital importance
to their socio-economic and technological development, provided that such measures are consistent with the
provisions of this agreement. (2) Appropriate measure, provided that they are consistent with the provisions of
this agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort
to practices which unreasonably restrain trade or adversely affect the international transfer of technology.
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Article 31: other use without authorization of the right holder
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Article 40 of TRIPS: Control of Anti-Competitive practices in Contractual Licences. (1) Members agree that
some licensing practices or conditions pertaining to intellectual property rights which restrain competition may
have adverse effects on trade and may impede the transfer and dissemination of technology. (2) Nothing in this
agreement shall prevent members from specifying in their legislation licensing practices or conditions that may
in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition in
the relevant market. As provided above, a member may adopt, consistently with the other provisions of this
agreement, appropriate measures to prevent or control such practices, which may include for example exclusive
grantback conditions, conditions preventing challenges to validity and coercive package licensing, in the light of
the relevant laws and regulations of that member.

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No or insufficient working of the invention in the national territory.7

Thus, it is evident that compulsory licensing can potentially combat some of the most
pernicious circumstances including anti-competitive practices. For our purpose such activities
as having a dampening effect on competition are the main focus of attention. The following
chapters throw some light on the position in US and EU; in order to understand how
involuntary licensing may cure anti-competitive behaviour of IP owners and what are the
conditions which define the ambit and scope of such licensing.8

6. COMPULSORY LICENSING UNDER INDIAN PATENT LAW

The grant of compulsory licenses of patent law provides section 84 of the Act. At any time
after the expiration of three years from the date of grant of a patent, any person interested
may make an application to the controller for grant of compulsory license on patent on any of
the following grounds.

That the reasonable requirements of the public with respect to the patented invention
have not been satisfied, or
That the patented invention is not available to the public at a reasonably affordable
price, or
That the patented invention is not worked in the territory of India.

An application for grant of compulsory licence may be made by any person including licence
holder. No person is to be stopped from alleging that the reasonable requirements of the
public with respect to the patented invention are not satisfied or that the patented invention is
not worked in India or that the patented invention is not available to the public at a
reasonably affordable price by reason of any admission made by him, whether in such a
licence or otherwise or by reason of his having accepted such a licence.

The application is to contain a statement setting out the nature of the applicants interest
together with prescribed particulars and the facts upon which the application is based. The
controller may grant a compulsory licence upon such terms as he may deem fit, if he is
satisfied that there exists any of the aforesaid conditions.9

7
Ibid
8
DAS, J.K., INTELLECTUAL PROPERTY RIGHTS, 164 (2nd ed., Kamal Law House, Kolkatta, 2008).
9
CORNISH, W.R., INTELLECTUAL PROPERTY: PATENTS, COPYRIGHTS, TRADEMARKS AND ALLIED RIGHTS, (3 rd
ed., Universal Law Publishing Co. Pvt. Ltd., New Delhi, 2002).

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6.1. Factors taken into account for the grant of compulsory licence

In considering the application, the controller is to take into account the following factors:

The nature of the invention, the time which has elapsed since the sealing of the patent
and the measures already taken by the patentee or any licensee to make full use of the
invention;
The ability of the applicant to work the invention to the public advantage;
The capacity of the applicant to undertake the risk in providing capital and working
the invention, if the application were granted;
Whether the applicant has made efforts to obtain a licence from the patentee on
reasonable terms and conditions and such efforts have not been successful within a
reasonable period10 as the controller may deem fit. In case of national emergency or
other circumstances of extreme urgency or in case of public non-commercial use or
on establishment of ground of anti-competitive practices adopted by the patentee, this
factor need not be considered.11

The controller is not required to take into account matters subsequent to the making of the
application.

In F. Hoffmann-La Roche Ltd. And Another v. Cipla Limited,12 the court observed that the
question of availability of the drug at affordable price was provided by way of provisions for
compulsory licensing. Since the legislative intent was to grant a monopoly to the patent
holder for atleast the first three years after the grant of patent to enable it to recover the
enormous costs incurred in research and development of the product, the court should not
override such legislative intent on the basis of untested principles.

In Franz Zaver Huemer v. New Yash Engineers,13 the Delhi High Court observed that non-
user of the patent by the patentee was a ground only under section 84 for grant of compulsory
licence to another person but the grounds in section 84 had not been made grounds of defence
under section 107 in a suit by the patentee.

10
Reasonable period means a period not ordinarily exceeding a period of 6 months.
11
NARAYANAN, P., INTELLECTUAL PROPERTY LAW, (3rd ed., Eastern Law House, New Delhi, 1998).
12
2009 (40) PTC 125 (Del.)
13
AIR 1997 Del 79

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6.2. Procedure for dealing with applications for grant of compulsory licences or
revocation patents

Where the controller is satisfied upon consideration of an application under section 8414 or
8515 that a prima facie case has been made out for the making of an order, he shall direct the
applicant to serve copies of the application upon the patentee and any other interested person.
The controller shall publish the application in the official journal. The patentee or any other
person may give notice of opposition to the controller within the prescribed time or the
extended time. Such a notice shall contain a statement setting out the grounds on which the
application is opposed. Where such notice of opposition is given, the controller shall notify
the applicant and shall give to the applicant and the opponent an opportunity of being heard
before deciding case.16

6.3. Powers of Controller in Granting Compulsory Licences

Where the controller is satisfied on an application made for the grant of compulsory licence
under section 84 that the manufacture, use or sale of materials not protected by the patent is
prejudiced by reason of conditions imposed by the patentee upon the grant of licences under
the patent, or upon the purchase, hire or use of the patented article or process, he may, order
the grant of licences under the patent to such customers of the applicant as he thinks fit as
well as the applicant. Where an application is made by a licence holder under the patent, the
controller may, if he makes an order for the grant of a licence to the applicant, order the
existing licence to be cancelled, or may order the existing licence to be amended.17

6.4. Grant of licence where the patentee has two or more patents

Where two or more patents are held by the same patentee and an applicant for a compulsory
licence establishes that the reasonable requirements of the public have not been satisfied with
respect to some of the said patents, then, if the controller is satisfied that the applicant cannot
efficiently or satisfactorily work the licence granted to him under those patents without
infringing the other patents held by the patentee and if those patents involve important
technical advancement or considerable economic significance in relation to the other patents,
he may, by order direct the grant of a licence in respect of the other patents also to enable the

14
Compulsory Licenses
15
Revocation of Patents by the controller for non-working
16
Section 87: Procedure for dealing with applications under sections 84 & 85
17
Section 88: Powers of controller in granting compulsory licences

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licensee to work the patent or patents in regard to which a licence is granted under section
84.18

6.5.Terms and Conditions of Compulsory Licences

Section 90 lays down terms and conditions for the grant of compulsory licence. In settling the
terms and conditions of a licence for the grant of compulsory licence, the controller shall
endeavour to secure that endeavour to secure that;

The royalty and other remuneration, if any, reversed to the patentee or other person
beneficially entitled to the patent, is reasonable, having regard to the nature of the
invention, the expenditure incurred by the patentee in making the invention or in
developing it and obtaining a patent and keeping it in force and other relevant factors;
The patented invention is worked to the fullest extent by the person to whom the
licence is granted and with reasonable profit to him;
The patented articles are made available to the public at reasonably affordable prices;
The licence granted is a non-exclusive licence;
The right of the licence is non-assignable;
The licence is for the balance term of the patent unless a shorter term is consistent
with the public interest;
The licence is granted with a predominant purpose of supply in the Indian market and
that the licence may also export the patented product, if need be in accordance with
section 84(7)(a)(iii);
In the case of semi-conductor technology, the licence granted is to work the invention
for public non-commercial use;
In the case the licence is granted to remedy a practice determined after judicial or
administrative process to be anti-competitive, the licensee shall be permitted to export
the patented product, if need be.

No licence granted by the controller is to authorize the licensee to import the patented article
or an article or substance made by a patented process from abroad where such importation
would, but for such authorization, constitute an infringement of the rights of the patentee.

The central government may, however, in the public interest direct the controller at any time
to authorize any licensee in respect of a patent to import the patented article or an article or
18
Ibid

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substance made by a patented process from abroad. The controller shall, thereafter give effect
to the aforesaid directions.

6.6.Compulsory Licence for exporting patented Pharmaceutical products

The patents(Amendment) Act, 2005 inserted section 92 A in the Patents Act, 1970 which
provides that compulsory licence shall be available for manufacture and export of patented
pharmaceutical products19to any country having insufficient or no manufacturing capacity in
the pharmaceutical sector for the concerned product to address public health problems,
provided compulsory licence has been granted by such country or such country has allowed
importation of the patented pharmaceutical products from India. On the receipt of an
application, the controller shall grant a compulsory licence solely for manufacture and export
of the concerned pharmaceutical product to such country under such terms and conditions as
may be specified and published by him.20

6.7.Termination of Compulsory Licence

On an application made by the patentee or any other person deriving title or interest in the
patent, a compulsory licence granted under section 84 may be terminated by the controller, if
and when the circumstances that gave rise to the grant thereof no longer exist and such
circumstances are unlikely to recur. The holder of the compulsory licence, however, shall
have the right to object to such termination. While considering an application, the controller
is to take into account that the interest of the person who had previously been granted the
licence is not unduly prejudiced.21

7. COMPULSORY LICENSING OF US

The United Nations patent law is authorised by the US Constitution. Article one, section 8,
clause 8 states that: the congress shall have power, to promote the progress of science and
useful arts, by securing for limited times to authors and inventors the exclusive right to their
respective writings and discoveries.22 The patent law is designed to encourage inventors to
disclose their new technology to the world by offering the incentive of a limited-time
19
Pharmaceutical products means any patented product, or product manufactured through a patented process,
of the pharmaceutical sector needed to address public health problems and shall be inclusive of ingredients
necessary for their manufacture and diagnostic kits required for their use.
20
KHADER, FEROZ ALI., THE LAW OF PATENTS-WITH A SPECIAL FOCUS ON PHARMACEUTICALS IN INDIA,
(LexisNexis, Butterworths, 2007).
21
Section 94 of the Patents Act, 1970
22
GOLDSTEIN, PAUL, COPYRIGHT, PATENT, TRADEMARK AND RELATED STATE DOCTRINES, (7th ed., Foundation
Press, New York, 2012.

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monopoly on the technology. This limited-time term of patent is 20 years from the earliest
patent application filling date (but this term can be extended via patent term adjustment).
After the patent term expires, the new technology enters the public domain and is free for
anyone to use.23

As a general matter, the US antitrust laws do not impose on individual firms, even
monopolies, a duty to do business with anyone or otherwise to make other facilities available.
The position can be succinctly with the aid of the following cases:

In Hartfors-Empire co. v. United States24, where the court asserted that a patent owner is not
in a position of a quasi-trustee for the public or under any obligation to see that the public
acquires the free right to use the invention. He has no obligation either to use it or grant its
use to others. However, there have been some decisions over the years, sometimes termed
essential facility cases, imposing duty to deal or decreeing compulsory licenses. In fact in
US the principle of granting involuntary compulsory licenses is inextricably interwoven with
the concept of essential facility is a facility or infrastructure which is necessary for
reaching customers and/ or enabling competitors to carry on their business. The essence of
this concept is captured appositely in the Terminal Railroad Association case.

In United States v. Terminal Railroad Association25, a group of railroads which jointly owned
the only railroad switching yard across the Mississippi river at the important city of St.Louis
prevented competing railroad services from offering transportation to and through that
destination. The Supreme Court required the railroads group to give access to non-members;
and concomitantly held that such conduct constituted both an illegal restraint of trade and an
attempt to monopolize.

In Eastman Kodak Co. v. Image Tech. Inc.,26 this is another important case, where the
Supreme Court emphasized that power gained through some natural or legal advantage such
as patent, copyright or business acumen can give rise to liability if a seller exploits his
dominant position in one market to expand his empire into the next. In this case, the plaintiff
won its monopolization claim that kodaks practice of refusing to sell patented parts to
independent service providers was unreasonable restraint of trade. A perusal of the above

23
Baechtold, Philippe and Miyamoto Tomoko, International Patent Law Harmonization A Search for the
Right Balance,1452, 1497, JOURNAL OF INTELLECTUAL PROPERTY RIGHTS, (2005).
24
323 U.S. 386 (1945)
25
224 U.S. 383 (1912)
26
504 U.S. 451 (1992)

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decisions makes it amply clear that in US, apart from mere ownership of an IPR, some
additional exclusionary conduct is essential for the grant of compulsory and involuntary
license.

8. COMPULSORY LICENSING OF EU

The competition policy under Article 82 of the EU Treaty has been used to restrict the
abusive commercial conduct of individual owners of IPRs, particularly where the IPR
protects a market standard or a de facto monopoly. This form of regulation has extended to
excessive pricing, but has been more frequently focused on the IPR holders conduct towards
innovators who are downstream of an IPR protected industrial standard including refusals
to deal and refusals to license. Article 82 in the system of EC competition law regulates
undertakings which have been found to occupy positions of dominant market power, such as
monopolies or near monopolies. It not merely prohibits exploitative pricing or limitations of
output, but also concerns itself with the use of market power to damage effective competition
in markets by preventing access to markets or driving out existing competition. It has been
interpreted to prohibit anti-competitive or exclusionary abuses such as refusal to supply
without justification. In essence, this provision of EU Treaty has been the conduit pipe for
implementing compulsory licensing, which can be understood by perforating through a
series of important cases.27
In AB Volvo v. Erik Veng28, Volvo held the design right in the UK over front wings for cars.
Veng imported panels into UK from Italy and Denmark where they had been manufactured
without Volvos consent. Volvo alleged infringement of its UK registered designs. Vengs
defense was that Volvos refusal to grant license was an abuse of dominant position when
Veng was willing to pay a reasonable royalty for license. The question before ECJ was
whether refusal to grant license by Volvo was an abuse of dominant position? The ECJ
said: An obligation imposed upon the proprietor of protected design to grant to third parties,
even in return for a reasonable royalty, a license for the supply of products incorporating the
design would lead to the proprietor thereof being deprived of the substance of his exclusive
right, and that a refusal to grant such a license cannot itself constitute an abuse of a dominant
position.

27
DEVENPORT, NEIL, THE UNITED KINGDOM PATENT SYSTEM: A BRIEF HISTORY, (Kenneth Mosan Publications
Ltd., London, 1979).
28
(1998) EUECJ R-238/87

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Outlining the circumstances, under which refusal to license may be deemed to constitute
abuse of dominance, the court said that Article 82 may be attracted if an undertaking
holding a dominant position involves in abusive conduct such as arbitrary refusal to supply
spare parts to the independent repairers, the fixing of prices for spare parts at an unfair level,
or a decision no longer to produce spare parts for a particular model even though many cars
of that model are still in circulation...Therefore, the significance of this case lies in
determining the boundaries of compulsory licensing. It is pertinent that merely a refusal to
grant license may not be anti-competitive in nature. Such refusal should be arbitrary, so as
to compel involuntary compulsory licensing, in order to mitigate the rigours of abusive
conduct.
In Radio Telefis Eireann & Independent Television Publications Ltd v. Commission of the
European Communities29, In the landmark case, broader and more flexible approach was
adopted -Magill, a Dublin company, was the compiler of a comprehensive weekly television
guide combining the listings of three television companies broadcasting in the UK and
Ireland. Since these listings were protected by copyright, Magill inevitably required a license,
the grant of which was refused by these companies. The ECJ affirmed the grant of
compulsory license by the Commission, on grounds of Article 82, and held that copyright
itself did not justify a refusal to license in the exceptional circumstances, where there was a
consumer demand for the new product, where the TV companies had a de facto monopoly
over the listings by virtue of their scheduling of TV programs, where a license of the listings
was an indispensable input for the comprehensive TV guide and where they were not
themselves supplying the product to the consumers.

9. LOOP HOLES OF COMPULSORY LICENSING: PATENT LAWS IN INDIA, US


& EU

As the provisions of US patents law, as there is no separate statute for the nation to protect
the patent interest of the individuals, but the protection of patents for those individuals are
granted under the Constitution of US, which has no wider scope for the protection of patents.
As the provisions of EU, of Article of 82 restricts the abusive commercial conduct of the
individuals and high lights the monopoly. Under the Indian provisions of compulsory licence,
the law was laid down as strict interpretation for granting of the licence. But, there has no
provisions strict interpretation for violating the patent laws.

29
(1995) EUECJ C-241/91 P, also called as Magill case

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CONCLUSION
The principle of compulsory licensing in India, US and EU has been used to countervail the
dampening effect of anti-competitive behaviour. However, this approach has not transcended
beyond the various pre-requisites such as the competition in secondary market and
indispensability and the jurisprudence in the EU and in the U.S. both suggest that under
exceedingly limited circumstances, compulsory licensing can be an appropriate remedy in
antitrust cases. Though applied cautiously and within a limited ambit, compulsory licensing
has served the purpose rectifying the market failure, which is the quintessence of competition
policy. The narrow and well defined application has at the same time ensured that an
efficacious and delicate balance is maintained between innovation and competition.30
The availability of compulsory licences under patent law and the control of anti-competitive
refusals to licence serve different concerns and complementary functions. In essence, the
former may help bridge systemic deficits or dilemmas of patent protection, whereas the latter
seeks to maintain the operation of the system of competition, within which patent protection
is embedded. But, it is to promote innovation; competition policy may be more effective than
is patent policy. The technicalities, to which the grant of compulsory licences is commonly
subject, do weaken it more than does the complexity of market analysis and of conduct
evaluation with respect to the control of abuses of market dominance.31
BIBLIOGRAPHY
Books
BENTLEY, L. AND SHARMAN, B., INTELLECTUAL PROPERTY LAW, 112, (2nd ed.,Oxford
University Press, New York, 2004).

COMPULSORY LICENSING: PRACTICAL EXPERIENCES AND WAYS FORWARD, 125(Reto M. Hilty


& Kung-Chung Liu ed., springer-verlag berlin Heidelberg, 2015).

DAS, J.K., INTELLECTUAL PROPERTY RIGHTS, 164 (2nd ed., Kamal Law House, Kolkatta,
2008).

CORNISH, W.R., INTELLECTUAL PROPERTY: PATENTS, COPYRIGHTS, TRADEMARKS AND

ALLIED RIGHTS, (3 rd ed., Universal Law Publishing Co. Pvt. Ltd., New Delhi, 2002).

30
PATERSON & GERALD, EUROPEAN PATENTSSYSTEM: THE LAW AND PRACTICE OF THE EUROPEAN PATENT
CONVENTION, (Sweet & Maxwell, London, 1992).
31
SHIVA VANDANA, PATENTS MYTHS AND REALITY,(Penguin Books India (P) Ltd., New Delhi, 2001).

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NARAYANAN, P., INTELLECTUAL PROPERTY LAW, (3rd ed., Eastern Law House, New Delhi,
1998).

KHADER, FEROZ ALI., THE LAW OF PATENTS-WITH A SPECIAL FOCUS ON PHARMACEUTICALS


IN INDIA, (LexisNexis, Butterworths, 2007).

GOLDSTEIN, PAUL, COPYRIGHT, PATENT, TRADEMARK AND RELATED STATE DOCTRINES, (7th
ed., Foundation Press, New York, 2012.

DEVENPORT, NEIL, THE UNITED KINGDOM PATENT SYSTEM: A BRIEF HISTORY, (Kenneth
Mosan Publications Ltd., London, 1979).

PATERSON & GERALD, EUROPEAN PATENTSSYSTEM: THE LAW AND PRACTICE OF THE

EUROPEAN PATENT CONVENTION, (Sweet & Maxwell, London, 1992).

SHIVA VANDANA, PATENTS MYTHS AND REALITY,(Penguin Books India (P) Ltd., New Delhi,
2001).

Journals

Basheer, Shamnad Indias Tryst with TRIPS: The Patents (Amendment) Act, 2005, vol.1,
THE INDIAN JOURNAL OF LAW AND TECHNOLOGY, 1242, 1257(2005).

Baechtold, Philippe and Miyamoto Tomoko, International Patent Law Harmonization A


Search for the Right Balance,1452, 1497, JOURNAL OF INTELLECTUAL PROPERTY RIGHTS,
(2005).

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