Ispo iure limits
- Introduction.
When analyzing the validity element of the three tier analysis that inspired the TRIPS PLUS ULTRA proposal (the other two elements are its justice and its effectiveness), we´ve said that the TRIPS Agreement sets a global standard, and that this global standard admits exceptions and limitations. We´ve also said that the relevance of the limitations must be measure in comparison with the global heart of the patent; what was set to be its heart is by far more relevant than what was left out, globally).
One of the posible limitations that countries may establish within their borders pertain the rights conferred by a patent. Within this kind of limitation, it is worth analyzing the issue of ispo iure limits.
2. The type of limit to the rights conferred by a patent: Ispo iure limits.
Taken from “A global solution for the protection of inventions“, pp. 157-160. Some internal citations omitted.
“It is worth analyzing the ipso iure limits that the TRIPS Agreement allows to establish within the countries. The establishment of such limits (that the TRIPS Agreement in article 30 determines as ‘exceptions to the rights conferred’) is open to each of the members under the condition that they are limited and ‘do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.’ As Kresalja states, ‘this article sets indeterminate concepts—broad and flexible—which opens the scope for disparities [ … ] any way these are matters that are subject to interpretation and debate’ (Kresalja 2001, 228).”
“A reasonable paradigm of the use of these limits is the European Patent Convention, which determines that a legitimate use by third parties could be those made in the private fields and with non-commercial purposes and the ones that have experimental and teaching goals, among others. Ipso jure limits are exceptions to the right of exclusion that all patent holders have, which because of an express legal provision operate without intervention from any authority. They are acts in regard to the subject matter protected by a patent that do not require the authorization of the patent holder. The ipso jure limits are constituted within the structure given by the TRIPS Agreement to these issues, as opposed to those acts referred to as “other use without authorization of the right holder” which are detailed in article 31 of the TRIPS Agreement (usually called compulsory licenses).”
“Generally the use of an invention in the private noncommercial sphere and the use of an invention for experimentation, teaching or academic research does not require the consent of the patent holder, or rather—what is practically the same—the holder is not entitled to prohibit such use. In these spheres the information and knowledge should always be public, which answer to the very function of the patent system that is to achieve technological progress. The ius prohibendi or right of exclusion—for considerations of collective convenience—is not applicable to certain activities.”
“This makes sense, as one of the objectives of the patent system is to induce the holder to share his knowledge with the society in order to have global knowledge increased. If a third party seeks to apply the patented invention in scientific studies to develop new technologies, it is not rational that this use is restricted. It would be contrary to the very nature of the patent regime. In this same line of thought, if the patent system seeks to encourage research, this regimen could not keep others from experimenting with the knowledge subject protected by a patent. This would be a contradiction. It is enough to understand that the rights of a patent are primarily economic to understand that the non-commercial activity is not of interest to the patent holder. (The laws around the world embrace this scheme of limitations mutatis mutandis, due to its profound logical sense.)”
“It must be set clear that even though this limit is conditioned to that the use given to the invention is in a no profit sphere (a research and experimentation objective rather than a commercialization objective), this does not exclude that from the experimentation with a given technology a different patentable invention could be developed. Otherwise it would fall in the aforementioned contradiction (keeping or discouraging others from experimenting with the knowledge recently incorporated to the state of art). There is a limitation to the right of the patent holder designed precisely to permit the exploitation of a patent that is obtained for a new invention developed from an earlier patented invention, which is called ‘dependent patent’.[1] With this purpose in mind, in the event that there is an absurd condition or a refusal to deal by the owner of the earlier patent, state intervention must mediate, for which the TRIPS Agreement has set certain conditions.[2] This limit is not an ipso iure limit. On the contrary, it falls within the limits that must be declared that are called “compulsory licensing” (subject up next explained).”
“[1] ‘Yet, United States law recognizes no compulsory licenses for dependent patents and it remains prepared to tolerate bargaining to impasse, whatever the social costs.’ See e.g., Merges & Lemley, (U. TEXAS L. REV.) (Reichman 2006, 6)”
“[2] These include the following: ‘(i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent; (ii) 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; and (iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent’ (paragraph l of article 31 of the TRIPS Agreement).”