Locally Working Patents and the Grant of Compulsory Licences

The Need for Stronger Statutory Provisions in Africa

in Global Journal of Comparative Law
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According to a well-established legislative tradition of patent law, failure to work patents while exercising any rights over the patented inventions constitutes an abuse. Consequently, several countries impose affirmative duties demanding evidence of commercial exploitation from patentees and their licensees within their territories. In view of the socio-economic significance of local working of patents, this article examines the extent to which African countries could implement national actions to ascertain mandatory requirements on the part of pharmaceutical patentees to work patented medicines locally, of which by default compulsory licensing would be justified. To that end, the author contends that African countries have the right to demand proof of local working of patents within their jurisdictions in order that the reasonable affordable requirements of the public can be met, because importation of essential medicines entails high costs and shortages and would not provide a sustainable means of protecting public health.

Locally Working Patents and the Grant of Compulsory Licences

The Need for Stronger Statutory Provisions in Africa

in Global Journal of Comparative Law

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References

8

Floyd Vaughan‘Suppression and Non-Working of Patents with Special Reference to the Dye and Chemical Industries’The American Economic Review 9(4) (1919) 693 at 700.

14

Peter Yu‘Toward a Nonzero-sum Approach to Resolving Global Intellectual Property Disputes: What We Can Learn from Mediators, Business Strategists, and International Relations Theorists’University of Cincinnati Law Review 70(2) (2002) 569 at 635 reviewing and presenting an argument that ignores the claim that iprs attract fdi increase taxes create jobs and facilitate technology transfer.

17

Peter Yu‘International Enclosure, the Regime Complex, and Intellectual Property Schizophrenia’Michigan State Law Review 2007 (1) at 27 stating that ldcs must fine-tune their ip systems in an effort to better reflect their different needs interests and goals.

18

Adam Mossoff‘Who Cares What Thomas Jefferson Thought About Patents? Revaluating the Patent “Privilege” in Historical Context’Cornell Law Review 92(5) (2007) 953 at 968 describing the continued use of the term ‘privilege’ despite the change in the nature of patents.

20

Ruth Okediji‘Back to Bilateralism? Pendulum Swings in International Intellectual Property Protection’University of Ottawa Law & Technology Journal 1(1–2) (2004) 125 at 129 casting btas as generally illicit exercises of power by the usa and more limitedly the eu to undermine and in some cases completely eliminate policy options and sovereign discretion granted by the trips Agreement to ldcs.

23

Cole Fauver‘Compulsory Patent Licensing in the United States: An Idea Whose Time Has Come’Northwestern Journal of International Law & Business 8(3) (1987) 666 at 672 detailing Canada Germany Japan Sweden Switzerland and the United Kingdom as countries that have maintained local working requirements. See also Joseph Yosick ‘Compulsory Patent Licensing for Efficient Use of Inventions’ University of Illinois Law Review 2001(5) (2001) 1275 at 1290.

24

Michael Halewood‘Regulating Patent Holders: Local Working Requirements and Compulsory Licenses at International Law’Osgoode Hall Law Journal 35(2) (1997) 243 at 246.

25

Mario Biagioli‘Patent Republic: Representing Inventions, Constructing Rights and Authors’Journal of Social Research 73(4) (2006) 1129 at 1138 arguing that early privileges emphasised local utility rather than disclosure of new information. See also Christopher May and Susan Sell Intellectual Property Rights: A Critical History (Boulder co: Lynne Rienner 2006) 170 explaining that rather than facilitating the importation of new technologies for production patents have historically been used to maintain import monopolies.

26

Mark Lemley‘Ex Ante versus Ex Post Justifications for Intellectual Property’University of Chicago Law Review 71(1) (2004) 129 at 148–149 arguing that many economic theorists improperly focus on patent rules as a means of controlling already-created innovation rather than on incentives to produce the innovation.

37

Graeme Dinwoodie‘The Architecture of the International Intellectual Property System’Chicago-Kent Law Review 77(3) (2002) 993 at 1004 observing that the institutional effect of trips has surely altered the character of international ip relations.

41

Adam Bierylo‘Importing Doesn’t Work: Justifying Local Working Requirements through a Historical, Theoretical, and Contractual Perspective’Western Journal of Legal Studies 3(1) (2013) 1 at 2.

42

Peter MeinhardtInventions Patents and Monopoly (London: Stevens & Sons1946) 43.

44

English Statute of Monopolies of 1623Chapter 21 Jac. 1 c. 3 ‘An Act concerning Monopolies and Dispensations with Penal Laws and the Forfeitures’. See Anderfelt International Patent Legislation and Developing Countries (n 40) 7. For further discussion of this statute see Chris Dent ‘Generally Inconvenient: The 1624 Statute of Monopolies as Political Compromise’ Melbourne University Law Review 33(2) (2009) 415 at 417.

45

Charles Twinomukunzi‘The International Patent System – A Third World Perspective’Indian Journal of International Law 22(1) (1982) 31 at 42. See Anderfelt International Patent Legislation and Developing Countries (n 40) 13 noting that as far as the American Patent Act is concerned there can be no doubt but that its primary reason was to give an incentive for working new inventions locally.

53

The Hague Conference (38 Stat. 1645T.S. No. 579. Revised 6 November 1925).

59

Robert Bird‘Developing Nations and the Compulsory Licence: Maximizing Access to Essential Medicines while Minimizing Investment Side Effects’The Journal of Law Medicine & Ethics 37(2) (2009) 209 at 219 explaining that compulsory licensing is a potentially powerful tool that developing nations can use to circumvent patent laws and give their residents access to life-saving medicines.

77

David Jonas and Thomas Saunders‘The Object and Purpose of a Treaty’Vanderbilt Journal of Transnational Law 43(3) (2010) 565 at 573.

80

Thaddeus Manu‘Essential Medicines and the Complexity of Implementing Nationally Based Compulsory Licensing: On the Need for a Regional System of Compulsory Licensing in Sub-Saharan Africa’European Intellectual Property Review 36(1) (2014) 39 at 49 highlighting how the potential threat of lawsuits by the pharmaceutical industry causes African countries to abandon any hope in the use of compulsory licences to obtain affordable medicines.

90

Michael Peil‘Scholarly Writings as a Source of Law: A Survey of the Use of Doctrine by the International Court of Justice’Cambridge Journal of International and Comparative Law 1(3) (2012) 136 at 138.

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