SCHEDULE
Article 2(1)
Modifications of specified provisions of the Patents Act 1977 in their application to the Isle of Man
1. In section 1, for subsections (3) and (4) substitute—
“3 A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
4 For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.”.
2. In section 5, after subsection (5) insert—
“6 References in subsection (5) above to a convention country include references to a country, other than the United Kingdom, which is a member of the World Trade Organisation.”.
3. In sections 22(9)(b) and 23(3)(b), for “indictment” substitute “information”.
4. In section 41, add the following subsection:—
“12 In the Isle of Man an order made under section 40 above by the comptroller for the payment of any sums may be enforced in like manner as an execution issued out of the court.”.
5. Omit sections 44 and 45.
6. For section 48 substitute—
“Compulsory licences: general
48.—(1) At any time after the expiration of three years, or of such other period as may be prescribed, from the date of the grant of the patent, any person may apply to the comptroller on one or more of the relevant grounds—
(a)
(a) for a licence under the patent;
(b)
(b) for an entry to be made in the register to the effect that licences under the patent are to be available as of right; or
(c)
(c) where the applicant is a government department, for the grant to any person specified in the application of a licence under the patent.
(2) Subject to sections 48A and 48B below, if he is satisfied that any of the relevant grounds are established, the comptroller may—
(a)
(a) where the application is under subsection (1)(a) above, order the grant of a licence to the applicant on such terms as the comptroller thinks fit;
(b)
(b) where the application is under subsection (1)(b) above, make such an entry as is there mentioned;
(c)
(c) where the application is under subsection (1)(c) above, order the grant of a licence to the person specified in the application on such terms as the comptroller thinks fit.
(3) An application may be made under this section in respect of a patent even though the applicant is already the holder of a licence under the patent; and no person shall be estopped or barred from alleging any of the matters specified in the relevant grounds by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted a licence.
(4) In this section “the relevant grounds” means—
(a)
(a) in the case of an application made in respect of a patent whose proprietor is a WTO proprietor, the grounds set out in section 48A(1) below;
(b)
(b) in any other case, the grounds set out in section 48B(1) below.
(5) A proprietor is a WTO proprietor for the purposes of this section and sections 48A, 48B, 50 and 52 below if—
(a)
(a) he is a national of, or is domiciled in, a country which is a member of the World Trade Organisation; or
(b)
(b) he has a real and effective industrial or commercial establishment in such a country.
(6) A rule prescribing any such other period under subsection (1) above shall not be made unless a draft of the rule has been laid before, and approved by a resolution of, each House of Parliament.
Compulsory licences: WTO proprietors
48A.—(1) In the case of an application made under section 48 above in respect of a patent whose proprietor is a WTO proprietor, the relevant grounds are—
(a)
(a) where the patented invention is a product, that a demand in the United Kingdom for that product is not being met on reasonable terms;
(b)
(b) that by reason of the refusal of the proprietor of the patent concerned to grant a licence or licences on reasonable terms—
(i) the exploitation in the United Kingdom of any other patented invention which involves an important technical advance of considerable economic significance in relation to the invention for which the patent concerned was granted is prevented or hindered, or
(ii) the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced;
(c)
(c) that by reason of conditions imposed by the proprietor of the patent concerned on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the United Kingdom, is unfairly prejudiced.
(2) No order or entry shall be made under section 48 above in respect of a patent whose proprietor is a WTO proprietor unless—
(a)
(a) the applicant has made efforts to obtain a licence from the proprietor on reasonable commercial terms and conditions; and
(b)
(b) his efforts have not been successful within a reasonable period.
(3) No order or entry shall be so made if the patented invention is in the field of semi-conductor technology.
(4) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(b)(i) above unless the comptroller is satisfied that the proprietor of the patent for the other invention is able and willing to grant the proprietor of the patent concerned and his licensees a licence under the patent for the other invention on reasonable terms.
(5) A licence granted in pursuance of an order or entry so made shall not be assigned except to a person to whom the patent for the other invention is also assigned.
(6) A licence granted in pursuance of an order or entry made under section 48 above in respect of a patent whose proprietor is a WTO proprietor—
(a)
(a) shall not be exclusive;
(b)
(b) shall not be assigned except to a person to whom there is also assigned the part of the enterprise that enjoys the use of the patented invention, or the part of the goodwill that belongs to that part;
(c)
(c) shall be predominantly for the supply of the market in the United Kingdom;
(d)
(d) shall include conditions entitling the proprietor of the patent concerned to remuneration adequate in the circumstances of the case, taking into account the economic value of the licence; and
(e)
(e) shall be limited in scope and in duration to the purpose for which the licence was granted.
Compulsory licences: other cases
48B.—(1) In the case of an application made under section 48 above in respect of a patent whose proprietor is not a WTO proprietor, the relevant grounds are—
(a)
(a) where the patented invention is capable of being commercially worked in the United Kingdom, that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable;
(b)
(b) where the patented invention is a product, that a demand for the product in the United Kingdom—
(i) is not being met on reasonable terms, or
(ii) is being met to a substantial extent by importation from a country which is not a member State;
(c)
(c) where the patented invention is capable of being commercially worked in the United Kingdom, that it is being prevented or hindered from being so worked—
(i) where the invention is a product, by the importation of the product from a country which is not a member State,
(ii) where the invention is a process, by the importation from such a country of a product obtained directly by means of the process or to which the process has been applied;
(d)
(d) that by reason of the refusal of the proprietor of the patent to grant a licence or licences on reasonable terms—
(i) a market for the export of any patented product made in the United Kingdom is not being supplied, or
(ii) the working or efficient working in the United Kingdom of any other patented invention...
