This document discusses compulsory licensing of patents and copyrights. It provides information on: 1) What compulsory licenses are and the objectives of granting them 2) Provisions for compulsory licenses under international agreements like Paris Convention, Berne Convention, and TRIPS 3) Circumstances under which compulsory licenses may be granted for patents, including cases in India and a key case involving Natco and Bayer 4) Provisions for compulsory licenses for copyrights under the Berne Convention and Indian Copyright Act

1. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
COMPULSORY LICENSING
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
JENI VARGHESE
EMAIL
PATENT DEPARTMENT
info@altacit.com
WEBSITE
www.altacit.com

2. COMPULSORY LICENSING
CHENNAI
3rd Floor, ‘Creative Enclave’, • Compulsory licenses are licenses that are granted by a
148-150, Luz Church Road,
Mylapore,
government to an individual or company seeking to use
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
patents, copyrighted works or other types of intellectual
BANGALORE
property, to do so without seeking the owner's consent.
Suite 920, Level 9,
Raheja Towers, • Compulsory licenses-involuntary contracts between a willing
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
buyer and an unwilling seller imposed or enforced by the
COIMBATORE
state.
BB1, Park Avenue,
# 48, Race Course Road, • The individual or company granted compulsory license have
Coimbatore - 641018.
Tel: +91 - 422 – 6552921 to pay the owner a set fee for the license.
• Objective of granting compulsory license is to prevent the
abuse of monopoly granted.
• Nations currently have the right to issue compulsory licenses
on patents and copyrights.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

3. Compulsory licenses under International
Law
CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore, Paris Convention for the Protection of Industrial Property :
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821 •The purpose of the Paris Convention was to establish a system for
BANGALORE inventors to protect their inventions internationally.
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
•Article 5
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 •The Paris Convention for the Protection of Industrial Property states
COIMBATORE
"each contracting state shall have the right to take legislative measures
BB1, Park Avenue,
# 48, Race Course Road,
providing for the grant of compulsory licenses to prevent the abuses
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
which might result from the exercise of the exclusive rights conferred
by the patent, for example, failure to work."
Berne Convention for the Protection of Literary and Artistic
Works-Article 11bis(2) and Article 13(1) provide the legal basis for
compulsory licensing at international level.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

4. Compulsory licenses under
International Law
CHENNAI
3rd Floor, ‘Creative Enclave’,
TRIPS - Trade related aspects of intellectual property
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
•The World Trade Organization provisions on intellectual
property.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers, •Contains rules on patents, copyrights and trademarks.
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 •Compulsory licenses and a number of restrictions on the use
COIMBATORE of compulsory licenses-Article 31 of TRIPS.
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
India is a party to above international agreements for the
protection of intellectual property that have provisions
regulating compulsory licensing.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

5. Compulsory Licenses and Patents
CHENNAI
3rd Floor, ‘Creative Enclave’, • The grant of a patent gives its owner (patentee) a limited
148-150, Luz Church Road,
Mylapore, period of exclusivity where the patentee can prevent others
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821 from practicing the patented invention.
BANGALORE
Suite 920, Level 9,
• This limited period of exclusivity affords the patentee
Raheja Towers,
26-27, M G Road, control over the invention’s price and, in turn, gives the
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 patentee a mechanism by which he/she can regain research and
COIMBATORE development costs.
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
• This right to exclusivity is enforced in most countries by the
Tel: +91 - 422 – 6552921
judicial system, with the unauthorized manufacture, use, sale,
offer to sale, or import of a patented technology deemed to be
infringement.
• The government has the power to revoke or limit a previously
granted exclusive patent right.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

6. Compulsory Licenses and Patents
CHENNAI
3rd Floor, ‘Creative Enclave’, • Compulsory licensees take away the patentee’s exclusive
148-150, Luz Church Road,
Mylapore, control over the patented technology.
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821 • Specific terms vary from country to country,
BANGALORE
Suite 920, Level 9, • Three basic situations:
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
(4) where a dependent patent is being blocked: Where a patented
Tel: +91 - 80 - 6546 2400
invention (‘dependent patent’) cannot be worked without
COIMBATORE
BB1, Park Avenue, exploiting an earlier patented invention (‘original patent’), the
# 48, Race Course Road,
Coimbatore - 641018. owner of the dependent patent generally must obtain a license
Tel: +91 - 422 – 6552921
over the original patented invention.
(2) the patent is not being worked, or
(3) the invention relates to food or medicine.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

7. Compulsory Licenses and Patents
CHENNAI
3rd Floor, ‘Creative Enclave’, INDIA:
148-150, Luz Church Road,
Mylapore,
• The objective of Patent Grant in India is to ensure that the
Chennai - 600 004. inventions are worked in India on a commercial scale and
Tel: +91 - 44 - 2498 4821
to the fullest extent without any undue delay.
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road, • Any interested person after expiry of three years from grant
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 of patent, may make an application to the Controller for grant
COIMBATORE
of compulsory license on the grounds that:
BB1, Park Avenue,
# 48, Race Course Road, (a) the reasonable requirements of the public with respect to
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
the patented invention have not been satisfied, or
(b) the patented invention is not available to the public at a
reasonable price, or
(c) the patented invention is not worked in territory of India.
[Section 84(1) of Patent Act, 1970]
• The controller may grant compulsory license if the above
conditions are satisfied upon such terms as he may deem fit.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

8. Compulsory Licenses and Patents
CHENNAI
3rd Floor, ‘Creative Enclave’, • While granting the compulsory license the Controller shall
148-150, Luz Church Road,
Mylapore, take into account - the nature of invention, time elapsed,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821 ability of applicant to work the invention, applicant’s efforts
BANGALORE for obtaining a license on reasonable terms. [Section 84 (6)]
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 • Above not applicable in certain cases-
COIMBATORE
BB1, Park Avenue, (i) national emergency, or
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
(ii) extreme urgency, or
(iii) public non-commercial use, or
(iv) on establishment of a ground of anti competitive
practices adopted by the patentee.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

9. Compulsory Licenses and Patents
CHENNAI
3rd Floor, ‘Creative Enclave’, • Terms and conditions of Compulsory License [Section 90 (1)]
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
(i) royalty and other remuneration, if any, reserved to the
Tel: +91 - 44 - 2498 4821 patentee, or other person beneficially entitled to the patent.
BANGALORE
Suite 920, Level 9, (ii) Patented invention should be worked to the fullest extent
Raheja Towers,
26-27, M G Road, by the person to whom the license is granted.
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
(iii) Patented article should be made available to the public at
COIMBATORE
BB1, Park Avenue, reasonably affordable prices.
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
(iv) License granted is a non-exclusive license.
(v) The right of licensee is non-assignable.
(vi) License is for the balance term of the patent unless a
shorter term is consistent with public interest.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

10. Compulsory Licenses and Patents
CASE LAW- NATCO Vs. BAYER
CHENNAI
3rd Floor, ‘Creative Enclave’, • The Controller General of India passed an order of compulsory license against
148-150, Luz Church Road, Bayer’s patent on drug Nexavar on March 09, 2012, which is India’s first
Mylapore,
Chennai - 600 004. compulsory license post TRIPS era.
Tel: +91 - 44 - 2498 4821
• NEXAVAR- anti-cancer drug, chemically known as Sorafenib tosylate (Patent-
BANGALORE
Suite 920, Level 9,
holder Bayer Corporation)
Raheja Towers,
26-27, M G Road,
• Hyderabad-based Natco had filed an application for issue of compulsory license
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
to manufacture the low-cost version of Nexavar.
• The compulsory license was granted in accordance with the grounds described
COIMBATORE
BB1, Park Avenue, under section 84 of the Indian Patent Act.
# 48, Race Course Road,
Coimbatore - 641018. • The license is valid till expiry of the patent in 2021.
Tel: +91 - 422 – 6552921
• The compulsory license enables Natco to sell the drug at a price not exceeding Rs
8,880 for a pack of 120 tablets (one month's therapy) as against Rs 2,84,428 being
the cost of Nexavar sold by Bayer.
• The order also makes it obligatory for Natco to supply the drug free of cost to at
least 600 needy patients per year.
• Natco will have to pay 6% royalty on sales to Bayer for the drug on a quarterly
EMAIL
basis.
info@altacit.com
WEBSITE
www.altacit.com

11. Compulsory Licenses and
Copyright
CHENNAI
3rd Floor, ‘Creative Enclave’,
• Copyright law provides for compulsory licenses of
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
copyrighted works for specific uses in many
countries.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
26-27, M G Road,
• Remuneration or royalties received for a copyrighted
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 work under compulsory license are specified by the
COIMBATORE
BB1, Park Avenue,
law of each country.
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
• Berne Convention for the Protection of Literary and
Artistic Works.
- Berne Convention is an international agreement governing
copyright .
- provide for the minimum requirements to be set when
EMAIL compulsory licenses are applied.
info@altacit.com
WEBSITE
-Article 11bis(2) and Article 13(1).
www.altacit.com

12. Compulsory Licenses and
Copyright
CHENNAI
3rd Floor, ‘Creative Enclave’, INDIA-compulsory licensing can be invoked under certain circumstances
148-150, Luz Church Road, with respect to both published works and unpublished works.
Mylapore,
Chennai - 600 004. THE COPYRIGHT ACT, 1957
Tel: +91 - 44 - 2498 4821
BANGALORE
COMPULSORY LICENSE FOR WORK WITHHELD FROM PUBLIC
Suite 920, Level 9,
Raheja Towers,
During the term of copyright in any work which has been published or
26-27, M G Road,
Bangalore - 560 001.
performed in public, a complaint is made to the Copyright Board that the
Tel: +91 - 80 - 6546 2400
owner of the copyright in the work
COIMBATORE
BB1, Park Avenue, (a) has refused to republish or allow the republication of the work or has refused to
# 48, Race Course Road,
Coimbatore - 641018.
allow the performance in public of the work, and by reason of such refusal the
Tel: +91 - 422 – 6552921 work is withheld from public; or
(b) has refused to allow communication to the public by broadcast of such work or in
the case of a sound recording the work recorded in such sound recording,
the Copyright Board if satisfied, direct the Registrar of Copyrights to grant the
such person or persons a license to republish the work, perform the work in public or
communicate the work to the public, as the case may be, subject to payment to
EMAIL
the owner of copyright such compensation and subject to such other terms and
info@altacit.com
conditions as the copyright board may determine. [Section 31(1)]
WEBSITE
www.altacit.com

13. Compulsory Licenses and
Copyright
CHENNAI
3rd Floor, ‘Creative Enclave’, COMPULSORY LICENSE IN UNPUBLISHED OR PUBLISHED
148-150, Luz Church Road,
Mylapore,
WORKS
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821 • In the case of any unpublished work or any work published or
BANGALORE
communicated to the public and the work is withheld from the public
Suite 920, Level 9,
Raheja Towers,
in India, the author is dead or unknown or cannot be traced, or the
26-27, M G Road,
Bangalore - 560 001.
owner of the copyright in such work cannot be found, any person
Tel: +91 - 80 - 6546 2400
may apply to the Copyright Board for a license to publish or
COIMBATORE
BB1, Park Avenue,
communicate to the public such work or a translation thereof in any
# 48, Race Course Road,
Coimbatore - 641018.
language. [Section 31A (1)]
Tel: +91 - 422 – 6552921
• Where license is granted, the Registrar of Copyright may direct the
applicant to deposit the amount of the royalty determined by the
copyright board in the public account of India or in any other
specified by the copyright board, so as to enable the owner of the
copyright or his heirs, executors or the legal representatives to claim
such royalty at any time. [Section 31A (5)]
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

14. CONCLUSION
CHENNAI
3rd Floor, ‘Creative Enclave’,
Though compulsory licenses work as a deterrent against misuse
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
of Intellectual (IP) rights by IP holders, it would diminish the
Tel: +91 - 44 - 2498 4821
purpose of the IP system. Compulsory licenses will reduce
BANGALORE
Suite 920, Level 9,
Raheja Towers,
inventors’ incentive to develop new technologies and it will in a
26-27, M G Road,
Bangalore - 560 001. way encourage inventors to keep inventions secret. This would
Tel: +91 - 80 - 6546 2400
COIMBATORE
defeat the main purposes of the patent system-to promote
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
innovation and to encourage disclosure of inventions. The
Tel: +91 - 422 – 6552921
possibility of a compulsory license would reduce the value of
the
patent; therefore, inventors would be less likely to invest money
to develop a new invention because the return on investment
would be smaller.
EMAIL
info@altacit.com
WEBSITE
www.altacit.com

15. CHENNAI
3rd Floor, ‘Creative Enclave’,
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Tel: +91 - 44 - 2498 4821
BANGALORE
Suite 920, Level 9,
Raheja Towers,
THANK YOU
26-27, M G Road,
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400
COIMBATORE
BB1, Park Avenue,
# 48, Race Course Road,
Coimbatore - 641018.
Tel: +91 - 422 – 6552921
EMAIL
info@altacit.com
WEBSITE
www.altacit.com