Article 165p. 165

COMMERCIAL LAWS NEGOTIABLE INSTRUMENTS, CORPORATION, INSURANCE, TRANSPORTATION, BANKING

The grant of a special compulsory license under this

provision shall be an exception to Sections 100.4 and 100.6

of Republic Act No. 8293 and shall be immediately

executory.

No court, except the Supreme Court of the Philippines,

shall issue any temporary restraining order or preliminary

injunction or such other provisional remedies that will

prevent the grant of the special compulsory license.

93-A.2. A compulsory license shall also be available for the

manufacture and export of drugs and medicines to any

country having insufficient or no manufacturing capacity

in the pharmaceutical sector to address public health

problems: Provided, That, a compulsory license has been

granted

by

such

country

or

such

country

has,

by

notification or otherwise, allowed importation into its

jurisdiction of the patented drugs and medicines from

the Philippines in compliance with the TRIPS Agreement.

93-A.3. The right to grant a special compulsory license

under this section shall not limit or prejudice the rights,

obligations and flexibilities provided under the TRIPS

Agreement

and

under

Philippine

laws,

particularly

Section 72.1 and Section 74 of the Intellectual Property

Code, as amended under this Act. It is also without

prejudice to the extent to which drugs and medicines

produced under a compulsory license can be exported as

allowed in the TRIPS Agreement and applicable laws.

(as amended by RA No 9502)

SECTION

94.

Period

for

Filing

a

Petition

for

a

Compulsory License . — 94.1. A compulsory license may

not be applied for on the ground stated in Subsection

93.5 before the expiration of a period of four (4) years from

the date of filing of the application or three (3) years from

the date of the patent whichever period expires last.

94.2. A compulsory license which is applied for on any of

the grounds stated in Subsections 93.2, 93.3, 93.4, and 93.6

and Section 97 may be applied for at any time after the

grant of the patent. (Sec. 34(1), R.A. No. 165)

(as amended by RA No 9502)

SECTION

95. Requirement to Obtain a License on

Reasonable Commercial Terms . — 95.1. The license will

only be granted after the petitioner has made efforts to

obtain

authorization

from

the

patent

owner

on

reasonable commercial terms and conditions but such

efforts have not been successful within a reasonable

period of time.

95.2. The requirement under Subsection 95.1 shall not

apply in any of the following cases:

(a) Where the petition for compulsory license seeks to

remedy

a

practice

determined

after

judicial

or

administrative process to be anti-competitive;

(b)

In

situations

of

national

emergency

or

other

circumstances of extreme urgency;

(c) In cases of public non-commercial use; and

(d) In cases where the demand for the patented drugs

and medicines in the Philippines is not being met to an

adequate extent and on reasonable terms, as determined

by the Secretary of the Department of Health.

95.3.

In

situations

of

national

emergency

or

other

circumstances of extreme urgency, the right holder shall

be notified as soon as reasonably practicable.

95.4. In the case of public non-commercial use, where the

government or contractor, without making a patent

search, knows or has demonstrable grounds to know that

a valid patent is or will be used by or for the government,

the right holder shall be informed promptly. (n)

95.5. Where the demand for the patented drugs and

medicines in the Philippines is not being met to an

adequate extent and on reasonable terms, as determined

by the Secretary of the Department of Health, the right

holder shall be informed promptly.

(as amended by RA No 9502) (n)

SECTION 96. Compulsory Licensing of Patents Involving

Semi-Conductor

Technology .

—

In

the

case

of

compulsory

licensing

of

patents

involving

semi-conductor technology, the license may only be

granted in case of public non-commercial use or to

remedy

a

practice

determined

after

judicial

or

administrative process to be anti-competitive. (n)

SECTION

97.

Compulsory

License

Based

on

Interdependence

of

Patents .

—

If

the

invention

protected by a patent, hereafter referred to as the "second

patent," within the country cannot be worked without

infringing another patent, hereafter referred to as the

"first patent," granted on a prior application or benefiting

from an earlier priority, a compulsory license may be

granted to the owner of the second patent to the extent

necessary for the working of his invention, subject to the

following conditions:

97.1. The invention claimed in the second patent involves

an

important

technical

advance

of

considerable

economic significance in relation to the first patent;

97.2. The owner of the first patent shall be entitled to a

cross-license on reasonable terms to use the invention

claimed in the second patent;

97.3. The use authorized in respect of the first patent shall

be non-assignable except with the assignment of the

second patent; and

97.4. The terms and conditions of Sections 95, 96 and 98

to 100 of this Act. (Sec. 34-C, R.A. No. 165a)

SECTION 98. Form and Contents of Petition . — The

petition for compulsory licensing must be in writing,

verified by the petitioner and accompanied by payment

of the required filing fee. It shall contain the name and

address

of

the

petitioner

as

well

as

those

of

the

respondents, the number and date of issue of the patent

in connection with which compulsory license is sought,

the name of the patentee, the title of the invention, the

statutory grounds upon which compulsory license is

sought, the ultimate facts constituting the petitioner's

cause of action, and the relief prayed for. (Sec. 34-D, R.A.

No. 165 )

SECTION 99. Notice of Hearing . — 99.1. Upon filing of a

petition, the Director of Legal Affairs shall forthwith serve

notice of the filing thereof upon the patent owner and all

persons having grants or licenses, or any other right, title

or interest in and to the patent and invention covered

thereby as appears of record in the Office, and of notice of

the

date

of

hearing thereon, on such persons and

petitioner.

The

resident

agent

or

representative

appointed in accordance with Section 33 hereof, shall be

bound to accept service of notice of the filing of the

petition within the meaning of this Section.

99.2. In every case, the notice shall be published by the

said Office in a newspaper of general circulation, once a

week for three (3) consecutive weeks and once in the IPO

Gazette at applicant's expense. (Sec. 34-E, R.A. No. 165 )

SECTION 100. Terms and Conditions of Compulsory

License . — The basic terms and conditions including the

rate of royalties of a compulsory license shall be fixed by

the Director of Legal Affairs subject to the following

conditions:

100.1. The scope and duration of such license shall be

limited to the purpose for which it was authorized;

100.2. The license shall be non-exclusive;

100.3. The license shall be non-assignable, except with

that part of the enterprise or business with which the

invention is being exploited;

100.4. Use of the subject matter of the license shall be

devoted predominantly for the supply of the Philippine

market: Provided , That this limitation shall not apply

where the grant of the license is based on the ground

that the patentee's manner of exploiting the patent is

determined by judicial or administrative process, to be

anti-competitive.

© Compiled by RGL

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