Commonwealth Numbered Acts

PATENTS (WORLD TRADE ORGANIZATION AMENDMENTS) ACT 1994 No. 154, 1994 - SECT 12

12.(1) This section applies to an invention ("patented invention") that:

   (a)  is the subject of a transitional standard patent; and

   (b)  is not a pharmaceutical substance in respect of which the term of the
        patent could have been extended under Division 2 of Part 3 of Chapter
        6 of the Principal Act (as in force immediately before this section
        commenced) if that Division had not been repealed.

(2) If, before 1 October 1994, a person had made a significant investment in
respect of the exploitation of a patented invention, the person may apply to a
prescribed court for an order requiring the patentee to grant to the applicant
a licence to exploit the patented invention.

(3) After hearing an application under subsection (2), the court may, subject
to this section, make the order if satisfied that:

   (a)  the person made the investment in good faith; and

   (b)  no action done by the person in preparation for the exploitation of
        the invention has infringed the patent.

(4) If:
(a) a person holds or held a licence ("old licence") to work a patented
invention; and

   (b)  the licence expires or expired at the end of the 16th year of the term
        of the patent; a prescribed court may, on the application of the
        person and subject to this section, make an order requiring the
        patentee to grant to the person a new licence to exploit the
        patented invention for so long as the patent remains in force.

(5) In making an order under subsection (4), the court must have regard to the
terms and conditions (if any) subject to which the old licence was granted to
the person.

(6) Before making an order under this section, the court must be satisfied
that the applicant has tried for a reasonable period, but without success, to
obtain from the patentee an authorisation to exploit the patented invention on
reasonable terms and conditions.

(7) An order must direct that the licence:

   (a)  is not to give the licensee, or a person authorised by the licensee,
        the exclusive right to exploit the patented invention; and

   (b)  is to be assignable only in connection with an enterprise or goodwill
        in connection with which the licence is used; and may direct that the
        licence is to be granted on any other terms specified in the order.

(8) An order operates, without prejudice to any other method of enforcement,
as if it were embodied in a deed granting a licence and executed by the
patentee and all other necessary parties.

(9) The patentee is to be paid in respect of a licence granted to the
applicant under an order:

   (a)  such amount as is agreed between the patentee and the applicant; or

   (b)  if paragraph (a) does not apply-such amount as is determined by a
        prescribed court to be just and reasonable having regard to the
        economic value of the licence.

(10) The patentee, and any person claiming an interest in the patent as
exclusive licensee or otherwise, are parties to any proceedings under this
section.

(11) In any proceedings under this section:

   (a)  the applicant must serve a copy of the application on the
        Commissioner; and

   (b)  the Commissioner may appear and be heard.

(12) An office copy of an order made under this section must be served on the
Commissioner by the Registrar or other appropriate officer of the court that
made the order.

(13) Section 134 of the Principal Act does not apply in the case of a
compulsory licence granted under an order made under this section.