In response to an investigation report the European Commission published in January of 2008, which demanded that Taiwan amend its Patent Act with respect to the conditions for compulsory licence, the Intellectual Property Office completed a draft amendment to the Patent Act intended to redefine and limit the conditions for compulsory licences, among others, and held the first public hearing on August 18 2008.
Article 76 of the current Patent Act stipulates that in addition to coping with national emergencies and non-profit-seeking use of a patent for the enhancement of public welfare, a compulsory licence, if used predominantly for the supply of the domestic market, may be granted to an applicant who has offered reasonable terms and conditions to a patentee but has failed to reach an agreement with the patentee within a considerable period of time. This low threshold for granting compulsory licences shall no longer be applicable if the revised Patent Act is implemented as drafted, since, according to the revised Article 76, an applicant who has offered reasonable terms and conditions to a patentee but has failed to reach an agreement with the patentee within a considerable period of time shall be granted a compulsory licence only if seeking not-for-profit use of a patent for the enhancement of public welfare or seeking use of a patent for the practice of a reinvention.
Nevertheless, in the public hearing, opinions varied as to whether the stipulation in Article 76 of the draft of the revised Patent Act cited below would endow the relevant authorities with too much discretionary power to grant compulsory licences:
Where a patentee has conducted any act determined by the court or by the Fair Trade Committee to restrict marketplace competition or constitute unfair competition, the Patent Office may, upon request, grant a compulsory licence if it is deemed to be necessary by the court or the Fair Trade Committee.
As the Patent Act is still in its draft stage, continued monitoring of any new developments will be required.
Joe-Ling Lin
Saint Island International Patent & Law Offices
7th Floor, No.248, Section 3
Nanking East Road
Taipei 105-45
Taiwan, R.O.C.
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377
siiplo@mail.saint-island.com.tw
www.saint-island.com.tw
