On the protection system of WTO intellectual property rights
Author: Xu Ximin Release time:
[Abstract] "The green hills cannot cover it, and it will flow eastward after all." After 15 years of long and arduous negotiations, China finally entered the WTO and became a member. This marks that China's opening up and modernization drive have entered a new stage of milestone significance. The WTO is an international economic organization based on legal rules and has a complete set of systematic legal regulations. Among them, the Marrakesh Agreement Establishing the World Trade Organization (GATT), the General Agreement on Trade in Services (GATS) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (Trips Agreement) constitute three basic substantive agreements. The Trips Agreement is a "treaty-plus" agreement, which means that on the basis of absorbing and confirming the protection standards of existing international intellectual property conventions, it further stipulates the substantive specifications for the protection of various types of intellectual property rights by refining and improving the protection standards. Mr. Zheng Chengsi once said: "The free flow of goods, the free flow of services and the protection of intellectual property rights constitute the three pillars of the WTO. Among these three pillars, the status of intellectual property rights is the most important, because intellectual property rights are related to the sale and purchase of tangible goods, as well as the protection of services. Trade is closely related. In fact, intellectual property protection plays a role in ensuring the free circulation of goods and services. ”①
[Keywords] Rights restrictions, restrictions on rights, Statutory cross-licensing, states of emergency, improved patents
The "Patent" section of the intellectual property agreement is the most difficult part of the negotiation process, involving issues that are highly controversial between developed and developing countries. , at the WTO Doha Ministerial Conference, intellectual property rights and public health issues have become fiercely controversial issues again. Developing countries believe that they should be able to obtain "life-saving" medicines for diseases such as AIDS and tuberculosis at low prices. Since these drugs are basically expensive patented drugs produced in developed countries, poor countries cannot buy them or cannot buy them in full. Some developing countries, led by Brazil, require that the Trips Agreement allow countries to take special measures in the event of a public health crisis. For example, domestic companies are allowed to imitate foreign patented drugs. The United States is worried that similar special measures will be abused, thus affecting the profits of its pharmaceutical industry. The final outcome of the meeting was that WTO members could take breakthrough drug patent protection measures in the event of public health emergencies. ②
1. Compulsory licensing system for patents
The "Patents" section of the Trips Agreement mainly focuses on the "rights restrictions" on patents. These clauses include three aspects: first, it stipulates the scope of rights restrictions that members are allowed to carry out; second, the scope of rights restrictions that members are not allowed to carry out; and third, what conditions must be met within the allowed scope. Regarding general rights restrictions, the agreement only provides for principles, but members can provide exceptions for exclusive rights. "Exceptions" mainly refer to "rights restrictions" (i.e. compulsory licenses). In most developing countries, there are compulsory licensing clauses, which means that the patentee in the developing country is granted exclusive patent rights for a specific period of time. After this period, the patentee must license his patent to local industries for use under the condition of compensation. . This provision requires that the patent should be implemented locally within a short period of time (such as three years) after the patent is granted. If the patent cannot or is not developed in time, it becomes the subject of compulsory licensing.
(1) The agreement stipulates the prerequisites that the exception should meet, namely: ③
⑴ It must be a restriction in order to prevent the patent from hindering the legitimate interests of third parties;
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⑵ Such restrictions cannot conflict with the normal use of the patent (including not harming the interests of the "licensee" of the patent);
⑶ Such restrictions cannot unreasonably damage the patent rights people's interests.
(2) Reasons expressly stipulated in the Trips Agreement and other reasons
The reasons expressly stipulated in Article 31, Paragraph 2 of the Trips Agreement include the following:
⑴Reject the transaction.
That is, "before such use, the intended user has sought authorization from the right holder on reasonable commercial terms and conditions, but such use is allowed only if the attempt is unsuccessful within a reasonable period of time." This provision is actually inconsistent with counter-use. Regarding monopoly, patent right is a legal monopoly right, but the right holder abuses its monopoly position and refuses other people's reasonable use requirements, which is an abuse of monopoly position by refusing to trade. ④
In order to obtain a compulsory license based on compulsory transactions, the interested party should prove that it has sought voluntary authorization from the right holder on reasonable commercial terms and conditions, but was refused or failed to obtain it within a reasonable period of time. reply.
⑵Emergency and extreme situations. This means that "members may be exempted from these conditions when they are in a domestic emergency, other emergencies, or for non-commercial public use. However, in the case of domestic emergencies or other emergencies, they shall be exempted from these conditions within a reasonable time." Prompt notification to the right holder. "The reason for such compulsory licensing is a state of emergency or similar reasons, such as a situation related to public health and nutrition.
⑶ Anti-competitive behavior. Compulsory licensing can be used to remedy anti-competitive behavior, and members do not need to apply the conditions specified in items (2) and (6). When determining compensation in such circumstances, the need to correct anticompetitive conduct should be taken into account. "The United States applies this compulsory license in accordance with its Sherman Antitrust Act.
Compulsory licensing to remedy anti-competitive behavior is a specific application of the principle of prohibiting the abuse of intellectual property rights stipulated in Article 8(2) of the Trips Agreement . This license must provide compensation to the right holder. The need to correct anti-competitive behavior can be considered in determining the amount of compensation. This provision allows for reduced compensation or even free licenses (such as the United States). Commercial public use. This can occur when a government agency uses a protected patent to fulfill its mission. It should be noted that such use does not have to be directly by the government, but can also be privately enjoyed, and such use is mandatory. License does not require prior request or notification.
⑸ Dependent patent. Article 31(1) of the Trips Agreement stipulates: “If such use is for the purpose of exploiting a (‘second patent’), cannot be used without infringing other patents ('first patent'), the following additional conditions should apply: ① Compared with the invention in the first patent, the invention in the second patent should involve important technological progress with great economic significance ; ② The owner of the first patent shall have the right to use the invention in the second patent by cross-licensing under reasonable conditions; ③ The use granted by the first patent shall not be transferred unless it is transferred together with the second patent. "This is a compulsory license granted based on patent dependence.
In this type of compulsory license, the second patent must have "important technological progress of great economic significance." This kind of patent actually It is an "improvement patent". In some countries, improvement patents are of great significance to the development of the electronics industry. However, obtaining a compulsory license from the original patent must depend on the economic and technical value comparison between the two. The criteria for this comparison of value depend on the economic and technological conditions of the country in which the patent is granted, as well as the size and strength of the patent owner involved. Therefore, patents that are economically significant in developing countries may not be so in developed countries.
⑹Other reasons. The reasons for compulsory licensing specified in Article 31 of the Trips Agreement are exemplary. Members may also stipulate other reasons for compulsory licensing in their domestic laws, such as public interests. Reasons; environmental protection reasons; failure to implement or insufficient implementation; national export needs
(3) Restrictions on compulsory licensing (called “restrictions on rights” by Zheng Chengsi) ⑥
Although the Trips Agreement stipulates the grounds for compulsory licenses more flexibly, the conditions for granting compulsory licenses are very specific, which are:
(1) For compulsory licenses (or government use), " "Case-by-case treatment", the experience in granting a certain compulsory license cannot be used as a rule or general rule.
⑵ Before applying for or approving a compulsory license, you should refer to the Annex to the Berne Convention on copyright compulsory licensing. certification requirements.
Because the Intellectual Property Agreement basically borrows the conditions for issuing compulsory licenses from the Berne Convention to the patent compulsory licensing system, but only adds "national emergency" and "other special emergencies".
⑶ If the relevant patent involves semiconductor technology, there will be more restrictions on issuing a compulsory license.
(4) All compulsory licenses can only be "non-exclusive" and "non-exclusive". This means that after the government compulsorily licenses a third party to use the content of a patent, the patent owner still has the right to use it himself or license others to use it through a contract.
⑸ Compulsory licenses are generally not transferable unless transferred together with the enterprise or the goodwill of the enterprise.
⑹ Products produced using compulsory licenses are mainly supplied to the domestic market.
⑺Once the conditions leading to compulsory licensing disappear and will not reoccur, use should be stopped (also known as the "situation restoration principle").
⑻ In the case of compulsory licensing of "dependent patents", there should be more restrictions and the last condition of Article 31 of the Trips Agreement should be met.
⑼Statutory cross-license system. The cross-licensing system is conducive to preventing both the “first patent” right holder and the “second patent” right holder (especially the latter) from unreasonably preventing the other party from implementing the relevant patent. Although this provision is included in one article with "compulsory license", it is essentially a "statutory license". Generally speaking, the compulsory license system can be used by unknown people in the public, while the "statutory license system" can only be used by certain people (one of the first or second patent owners). ⑦
⑽ All "involuntary licenses" must be paid for use and cannot be used for free.
⑾Any decision on involuntary licensing must provide the right holder with an opportunity to request review. The amount of royalties paid in the case of involuntary licensing must also be provided with an opportunity to review (judicial review and administrative review) ).
II. Compulsory licensing system for patents in China
Chapter 6 of China’s Patent Law and Chapter 5 of the Implementing Rules of the Patent Law both stipulate “compulsory licensing for patent implementation” .
(1) Reasons
The Patent Law stipulates three reasons:
First, when such permission cannot be obtained within a reasonable period of time compulsory license. Article 48 of the Patent Law stipulates: “When an entity with the conditions for implementation requests the holder of an invention or utility model patent for permission to exploit its patent on reasonable terms, but fails to obtain such permission within a reasonable period of time, the Patent Administration of the State Council shall The department may grant a compulsory license to implement the invention patent or utility model patent based on the unit's application." Article 72 of the "Patent Law Implementing Rules" stipulates: "After three years from the date of grant of the patent right, any unit may request a compulsory license from the Patent Administration Department of the State Council in accordance with Article 48 of the Patent Law. Request for compulsory license , a request for compulsory license shall be submitted to the Patent Administration Department of the State Council, stating the reasons and attaching two copies of the relevant supporting documents. The Patent Administration Department of the State Council shall send a copy of the request for compulsory license to the patentee, who shall State Council’s Patent Administration Department shall state its opinions within the time limit specified; failure to respond within the time limit shall not affect the State Council’s Patent Administration Department’s decision on compulsory licensing.”
Second, the state shall issue compulsory licensing under extraordinary circumstances such as a state of emergency. . Article 49 of the "Patent Law" stipulates: "In the event of a national emergency or extraordinary situation, or for the purpose of public interests, the patent administration department of the State Council may grant a compulsory license to exploit an invention patent or utility model patent."
The third is compulsory licensing to promote the implementation of new inventions. Article 50 of the Patent Law stipulates: “A patented invention or utility model is technically more advanced than a previously patented invention or utility model, and its implementation depends on the implementation of the previous invention or utility model. , the patent administration department of the State Council may grant a compulsory license to implement the previous invention or utility model based on the application of the subsequent patentee.
In the case where a compulsory license for implementation is granted in accordance with the provisions of the preceding paragraph, the patent administration department of the State Council may also grant a compulsory license for the implementation of the subsequent invention or utility model based on the application of the previous patentee. "
Article 51 of the "Patent Law" stipulates that "any unit or individual that applies for a compulsory license in accordance with the provisions of this Law shall provide proof of failure to sign a license contract with the patentee on reasonable terms." Article 52 of the Patent Law stipulates the burden of proof for applicants for compulsory licenses. It shall be registered and announced.
The decision to grant a compulsory license shall specify the scope and time of implementation based on the reasons for the compulsory license. When the reasons for the compulsory license are eliminated and no longer occur, the patent administration department of the State Council shall determine the scope and time of the compulsory license. After review of the patentee's request, a decision will be made to terminate the compulsory license.
(3) Restrictions and compensation (remuneration) ⑧
Article 53 of the Patent Law stipulates: “Units and individuals that have obtained a compulsory license for implementation do not enjoy the exclusive right to implement it and have no right to allow others to implement it. "
The "Patent Law Implementing Rules" stipulate that the decision made by the Patent Administration Department of the State Council to grant a compulsory license shall limit the implementation of the compulsory license mainly to the needs of supplying the domestic market. The inventions and creations involved in the compulsory license are For semiconductor technology, compulsory licensing is limited to non-commercial use by companies, or use that is determined to be anti-competitive through judicial or administrative procedures.
Article 54 of the Patent Law. The article stipulates: “The unit or individual that has obtained the compulsory license shall pay the patentee a reasonable royalty, the amount of which shall be negotiated by both parties; if the two parties cannot reach an agreement, the patent administration department of the State Council shall make a ruling. "Article 73 of the "Patent Law Implementing Rules" stipulates that in accordance with Article 54 of the Patent Law, when requesting the patent administration department of the State Council to adjudicate the amount of royalties, the party concerned shall submit a request for adjudication and attach documents proving that the two parties cannot reach an agreement. State Council Patent The administrative department shall make a ruling within 3 months from the date of receipt of the request and notify the parties.
(4) Judicial review
Article 55 of the Patent Law stipulates. Judicial review of compulsory licenses, “If the patentee is dissatisfied with the decision of the Patent Administration Department of the State Council on the implementation of compulsory licenses, the patentee and the unit or individual who obtained the compulsory license shall challenge the ruling of the Patent Administration Department of the State Council on the royalties for the implementation of compulsory licenses. If you are dissatisfied, you may file a lawsuit with the People's Court within 3 months from the date of receipt of the notice."
2. Differences between Chinese legislation and the Trips Agreement
1. Industrial product appearance Can a design be used as a patent? Today, most countries protect industrial designs. As a minimum requirement, the Paris Convention stipulates that all member countries must provide protection. The Paris Convention does not specify what kind of laws should be adopted for protection. In some countries, industrial designs and "applied works of art" (that is, the objects of protection under copyright law) are regarded as the same. The first protection object of "copyright" is also the first driving factor for its emergence.
As early as 1806, France promulgated a special law on industrial designs, giving it the protection of industrial property rights. However, many artistic creations meet the protection requirements of both the 1806 Law and the French Copyright Law of 1793. How to distinguish which designs can only be protected by industrial property law but not copyright law has become a problem until 1968 in the United Kingdom. A "Design Copyright Law" was promulgated, and the concept of "special industrial copyright" officially appeared. Since then, some countries have followed the British approach in the protection of industrial designs (such as Singapore and Germany). While specifically emphasizing the protection of industrial designs, it also allows members to freely choose what kind of laws to protect. In China, industrial designs are protected by the Patent Law, but China calls this right ". Patent" in 2006 had at least one side effect.
After someone obtains a design patent, they mark "patented" on the products they sell, but rarely mark "design patented" on the products they sell. This is deceptive (or at least misleading) to some extent. consumer. Because consumers often equate "patent" with "invention patent". In other countries, such problems do not arise because "design rights" are not called "patents" there. ⑨
2. Should compulsory licensing be adopted for industrial designs?
The Trips Agreement does not mention compulsory licensing of industrial designs, and in most countries that protect designs with industrial property laws, compulsory licensing systems for industrial designs are not allowed. China’s patent law only provides for compulsory licensing of invention patents and utility model patents. However, the agreement allows members to impose certain restrictions on industrial design rights, but the restrictions must meet three prerequisites:
(1) They must be to ensure that the legitimate interests of third parties will not be affected by the exclusive rights of the design. due impact.
⑵ Cannot hinder the normal use of the relevant design, including the interests of legitimate licensees.
(3) It cannot exceed the reasonable limit, causing damage to the interests of the right holder.
In practice, China can only use compulsory licensing for invention patents, utility model patents, copyrights, etc., but never for trademark rights and design patent rights. The Trips Agreement neither explicitly prohibits nor allows it, leaving a question worth exploring.
Notes:
① Zheng Chengsi: "Intellectual Property Law-Several Research Focuses at the Beginning of the New Century", Law Press, 2004 edition, page 278.
②Kong Xiangjun: "WTO Intellectual Property Agreement and its Domestic Application", Law Press, 2002 edition, pp. 228-229.
③Zheng Chengsi: "Intellectual Property Law—Several Research Focuses at the Beginning of the New Century", Law Press, 2004 edition, page 339.
④Kong Xiangjun: "WTO Intellectual Property Agreement and its Domestic Application", Law Press, 2002 edition, page 257.
⑤See P.Mendes da Costa, 'Patent Harmonization through GATT: TRIP or TRAP?, Patent World', (September 1992); Reprinted in Kong Xiangjun: "WTO Intellectual Property Agreement and its Domestic Application", Law Press 2002 edition, page 258.
⑥Zheng Chengsi: "Intellectual Property Law—Several Research Focuses at the Beginning of the New Century", Law Press, 2004 edition, page 339.
⑦ Zheng Chengsi: "Intellectual Property Law—Several Research Focuses at the Beginning of the New Century", Law Press, 2004 edition, page 341.
⑧Kong Xiangjun: "WTO Intellectual Property Agreement and its Domestic Application", Law Press 2002 Edition, pp. 262-263; "Patent Law" (August 25, 2000); "Patent Law Implementation" "Details" (June 15, 2001).
⑨ Zheng Chengsi: "Intellectual Property Law—Several Research Focuses at the Beginning of the New Century", Law Press, 2004 edition, page 332.
(Author’s unit: Tianning District People’s Court, Changzhou City, Jiangsu Province)