Standing Committee on the Law of Patents

E SCP/ 20 /3 ORIGINAL: ENGLISH DATE: NOVEMBER 15 , 201 3 Standing Committee on the Law of Patents Twentieth Session Geneva, January 27 to 31, 2014 EXCEPTIONS AND LIMITATIONS TO PATENT RIGHTS: PRIVATE AND/OR NON-COMMERCIAL USE Document prepared by the Secretariat INTRODUCTION 1. At its nineteenth session, held from February 25 to 28, 2013, the Standing Committee on the Law of Patents (SCP) agreed that, in relation to the topic “exceptions and limitations to patent rights”, the Secretariat would prepare, inter alia , a document, based on input received from Member States, on how the following five exceptions and limitations were implemented in Member States, without evaluating the effectiveness of those exceptions and limitations: private and/or non-commercial use; experimental use and/or scientific research; preparation of medicines; prior use; use of articles on foreign vessels, aircrafts and land vehicles. The document should also cover practical challenges encountered by Member States in implementing them. 2. Pursuant to the above decision, the Secretariat invited Member States and Reg ional Patent Offices, through Note C.8076, to submit information to the Internat ional Bureau add itional to , or updat ing, the information contained in their responses to the questionnaire on exceptions and limitations to patent rights on the above five exceptions and limitations. In addition, Member States and Regional Patent Offices which had not yet submitted their responses to the quest ionnaire were inv ited to do so . 3. Accordingly, this document provides information on how exceptions and limitations regarding private and/or non-commercial use have been implemented in Member States. The document aims at providing a comprehensive and comparative overview of the implementation of this exception under the applicable laws of Member States. Reference is made to the original responses submitted by the above Member States and a regional patent office to clarify the scope of the exception in a particular jurisdiction. The Questionnaire as well as the responses received from Member States are available in full on the website of the SCP electronic forum at: SCP/20/3 page 2 http://www.wipo.int/scp/en/exceptions/ . With a view to assisting easier access to the information contained in the responses, the website presents all responses in a matrix format with hyperlinks to each section in each response. 4. This document consists of three Sections: (i) Public Policy Objectives for Providing the Exception; (ii) The Applicable Law and the Scope of the Exception; and (iii) Implementation Challenges. 5. The following Member States and patent Offices indicated that their applicable laws provided for exceptions and/or limitations related to the prior use exception: Albania, Algeria, Argentina, Armenia, Australia, Austria, Azerbaijan, Bosnia and Herzegovina, Brazil, Bulgaria, China, Costa Rica, Croatia, Cyprus, Czech Republic, Denmark, Dominican Republic, El Salvador, Finland, France, Georgia, Germany, Greece, Honduras, Hong Kong (China), Hungary, Israel, Italy, Japan, Jordan, Kenya, Latvia, Lithuania, Madagascar, Mexico, Morocco, Norway, Oman, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Serbia, Slovakia, Spain, Sri Lanka, Sweden, Switzerland, Tajikistan, Thailand, Turkey, Uganda, Ukraine, United Kingdom, Viet Nam, Zimbabwe and the Eurasian Patent Office (EAPO) (61 in total). PUBLIC POLICY OBJECTIVES FOR PROVIDING THE EXCEPTION 6. While multiple public policy objectives are pursued by the private and/or non-commercial use exception in some Member States,1 most Member States provided responses which described the following objectives. Balancing of legitimate interests 7. Many responses stated that the policy objectives pursued by the private and non-commercial use exception were related to balancing legitimate interests. For example, the need to establish a balance of interest between private use and commercial use was stated by the response from Austria. The response from Brazil referred to the exception which did not unreasonably conflict with a normal exploitation of the patent and did not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties, in order to contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. The response from China specified that “[p]ersonal or non- commercial use [did] not affect the economic interests of neither the right holders nor the public at large, so one should not allow right holders to enjoy absolute exclusive ownership” in order to promote “the economic development or the well beings of the entire society”. Otherwise, “it would make the patent coverage excessively large, thus interrupting the normal activities of the public at large”. 2 In Hungary, private use, for example, is not considered as prejudicing “the normal exploitation” of patents.3 1 For example, the response from the Republic of Moldova stated the following public policy objectives: (i) promote research; (ii) avoid abuse of rights in cases of non-commercial (private) use; (iii) contribute to the dissemination of the patent information; (iv) provide a mechanism to use a patented invention in case that it is not utilized by the owner and the late refuses to grant a license; and (v) provide a mechanism to use a patented invention in force majeure situation which endanger public security and/or health. 2 Similarly, the response from Japan noted that extending enforcement of patents to the individual use of patented inventions at home, which went beyond business use, was excessive with regard to the actual social conditions. 3 Similarly, the response from Portugal indicated that the exception did not harm the right owner. In addition, the response from El Salvador stated that it should be “ensured that the normal working of the invention by the owner is not harmed”. SCP/20/3 page 3 Rationale of the Patent System 8. Some Member States indicated that private and/or non-commercial use by third parties is outside the raison d’être of the patent system. For example, the response from the Netherlands stated that the objective of the patent system, i.e., to “reward [the patentee] for his contribution to the state of the art, with an exclusive right to exploit the invention”, would not be applicable in case of private and non-commercial activities. 4 The response form the Republic of Korea noted that, since the objective of patent protection was to “develop industries, providing the exception of private or theoretical working of a patented invention is legitimate.” Norway responded that private and non-commercial activities were “outside the exploitation as a professional activity”.5 Similarly, other Member States, such as Hungary, stated that “the incentive to innovate is not endangered” by the exception. Promotion of private, creative and academic activity 9. Some Member States highlighted the additional aspects of the policy objectives to be promoted, in particular, private and academic activity and creativity, personal and family use, research and teaching 6, as well as dissemination of knowledge. For example, it was noted by Honduras that the exception was aiming at “eliminating barriers to trade, protecting the strictly personal or family/individual right of use and stimulating scientific research and teaching”. In Mexico, it was considered that activities in the private or academic sphere and for non- commercial purposes “promote[d] and foster[ed] inventive industrially applicable activity”. Similarly, the response from Cyprus stated that the exception aimed at “encourag[ing] private initiative, principally learning, in colleges and universities”, and non-commercial or not-for-profit use of patented inventions by third parties would not incur any harm to the patentees. In the same manner, the responses from Italy and Romania stated that patents were not intended to “intervene in the private sphere”. In addition, the response from Sri Lanka stated that the objective was to “promote creativity while protecting the rights of patent holders”. 7 As stated by the response from the United Kingdom, another aspect was that it “should be possible to carry out minor activities without hindrance by the threat of patent infringement”. Knowledge sharing, experimental research and enhancing R&D 10. Some Member States 8 emphasized that the exception aimed at promoting knowledge sharing, experimental research and enhancing R&D. The response from Mexico stated that “[p]urely experimental, scientific or technological research, testing or teaching activities, involving the manufacture or use of a product or a patented process, within the private or academic sphere and for non-commercial purposes, [were] activities which promote[d] and foster[ed] inventive industrially applicable activity, the technical improvements and the 4 See the Netherlands Parliamentary Papers 197, 1904-1905, no. 3. 5 The response from Norway stated as follows: “The term ‘exploit’ implies certain limitations regarding the kinds of activities comprised by the patent protection. Patent rights only aim to protect the right holder against commercial exploitation of the invention. There is a common interest in keeping non-commercial use in the public

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