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26.27 The patents legislation of other jurisdictions, including the United Kingdom, New Zealand and Canada, contains Crown use provisions similar to those in the Patents Act.
26.28 In the United Kingdom, the Patents Act 1977 (UK) provides for the exploitation of a patented invention ‘for the services of the Crown’ by ‘any government department and any person authorised in writing by a government department’.[49] The Act provides specifically that the term ‘services of the Crown’ includes ‘the production or supply of specified drugs and medicines’.[50]
26.29 In New Zealand, the Patents Act 1953 (NZ) provides for the exploitation of a patented invention by ‘any Government Department and any person authorised in writing by a Government Department … for the services of the Crown’.[51]
26.30 In Canada, Crown use is subject to prior authorisation by the Commissioner of Patents. The Patent Act 1985 (Canada) provides that the Commissioner of Patents may ‘on application by the Government of Canada or the government of a province, authorize the use of a patented invention by that government’,[52] on terms set by the Commissioner.[53] There is no requirement in the Act that the use must be for the services of the Government.
26.31 The United States has ‘government use’ provisions, which limit the remedies that can be obtained from the United States Government as a result of use of a patented invention by it or a party authorised by it. The patent holder is entitled to ‘reasonable and entire compensation’.[54]
26.32 There is no evidence that the Crown use provisions in the United Kingdom, New Zealand or Canada have been used any more frequently than in Australia.[55] In a 1998 report to the TRIPS Council, the United Kingdom stated that, at least since 1996, no Crown use authorisations had been made.[56] The report implies that, in the United Kingdom, the Crown use provisions are most likely to be asserted by the Ministry of Defence.[57] Similarly, New Zealand reported in 1997 that, at least since 1993, there had been no exercise of Crown use provisions.[58] In contrast, in the United States it has been claimed that ‘the US has always relied heavily on the non-voluntary licensing of patented inventions to facilitate public, non-commercial uses by the government and its agents’, particularly in relation to national defence.[59]
[49]Patents Act 1977 (UK) s 55(1).
[50] Ibid s 56(2). This provision was not present in the Patents Act 1949 (UK) and may have been considered desirable in order to remove any doubt about the effect of the decision in Pfizer Corporation v Ministry of Health [1965] AC 512. The Act also includes detailed provisions relating to Crown use during an emergency Patents Act 1977 (UK) s 59.
[51]Patents Act 1953 (NZ) s 55(1).
[52]Patent Act 1985 (Canada) s 19(1).
[53] Ibid s 19(2). The terms must comply with principles set out in that subsection.
[54] See 28 USC s 1498.
[55] There is a small number of reported United Kingdom cases in which the Crown use provisions were at issue: Pfizer Corporation v Ministry of Health [1965] AC 512; Pyrene Co Ltd v Webb Lamp Co Ltd (1920) 37 RPC 57; Aktiengesellschaft für Autogene Aluminium Schwiessung v London Aluminium Co Ltd (No 2) (1923) 40 RPC 107.
[56]Review of Legislation in the Fields of Patents, Layout-Designs (Topographies) of Integrated Circuits, Protection of Undisclosed Information and Control of Anti-competitive Practices in Contractual Licences: United Kingdom, 7 January 1998 (1998) World Trade Organization.
[57] Ibid.
[58]Review of Legislation in the Fields of Patents, Layout-Designs (Topographies) of Integrated Circuits, Protection of Undisclosed Information and Control of Anti-competitive Practices in Contractual Licences: New Zealand, 24 October 1997 (1998) World Trade Organization.
[59] J Reichman and C Hasenzahl, Non-voluntary Licensing of Patented Inventions: Historical Perspective, Legal Framework under TRIPS, and an Overview of the Practice in Canada and the United States of America: Issue Paper No 5 (2003) UNCTAD–ICTSD Capacity Building Project on IPRs and Sustainable Development, 5.