Injunctions under government use/compulsory license - TRIPS provisions and US practice

[James Love <love@cptech.org>]

The following is the provision in the TRIPS regarding
injunctions for infringements.  Note that in paragraph 2,
when use is:

      by governments, or by third parties authorized 
      by a government, without the authorization of the
      right holder are complied with, Members may limit 
      the remedies available against such use to payment 
      of remuneration in accordance with subparagraph (h) 
      of Article 31. 

In other words, countries may, in their national legislation,
eliminate a patent owner's right to seek injunction in matters
concerning government use or compulsory licenses, thus
speeding up the process considerably.  The only right the
patent owner is guaranteed in the TRIPS is the right to
contest the compensation, (Article 31.h), under a country's
national laws. 

Note also, that this is the practice in the USA right now
for government use.  Indeed, in the USA, the government
does not even have to get a license to use a patent, and
the patent owner's only remedy is to seek compensation,
under 28 USC 1498 (see below).


<-----------begin TRIPS Article 44------------------------>

                           Article 44
                           Injunctions

1.    The judicial authorities shall have the authority to order
a party to desist from an infringement, inter alia to prevent the
entry into the channels of commerce in their jurisdiction of
imported goods that involve the infringement of an intellectual
property right, immediately after customs clearance of such
goods. Members are not obliged to accord such authority in
respect of protected subject matter acquired or ordered by a
person prior to knowing or having reasonable grounds to know that
dealing in such subject matter would entail the infringement of
an intellectual property right. 

2.    Notwithstanding the other provisions of this Part and
provided that the provisions of Part II specifically addressing
use by governments, or by third parties authorized by a
government, without the authorization of the right holder are
complied with, Members may limit the remedies available against
such use to payment of remuneration in accordance with
subparagraph (h) of Article 31. In other cases, the remedies
under this Part shall apply or, where these remedies are
inconsistent with a Member's law, declaratory judgments and
adequate compensation shall be available.

<------------end TRIPS article 44--------------------------->


As noted above, in the USA, 28 USC 1498 provides the basis
for US government use of patents.  This includes cases where
a private contractor acts on behalf of the government.  The 
URL for the US statute is here:

http://www4.law.cornell.edu/uscode/28/1498.html

See in particular this note from the US National Aeronautical
and Space Agency (NASA) about this statute.

<---------------begin NASA Note----------------------------->

http://www.dfrc.nasa.gov/TechTransfer/PatentInfringement.html

                  . . . 28 U.S.C. 1498, which provides that a suit
against the Government in the U.S. Court of Federal Claims is the
exclusvie remedy for patent holders who allege their patented invention
has been infringed by the U.S. Government or by one acting for the
Government. The primary purpose of this statute is to protect and
relieve contractors from any liability for infringement by the owner
when an invention is used by or manufactured for the United States. By
virtue of this statute, the Government may be held liable to the patent
owner for payment of the "reasonable and entire compensation" for its
unauthorized use of the patent. Unlike a private party, however,  the
Government cannot commit the tort of "patent infringement." Governmental
use of a patented invention is viewed as an eminent domain taking of a
license under the patent and not as a tort. 

                  The Government may delegate its eminent domain power
over patents to contractors acting on its behalf. This is accomplished
through inclusion of the "Authorization and Consent" clause in the
contract [FAR clause 52.227-1]. This clause is usually included in
research and development contracts and is a very significant power to
grant to a contractor as it makes the Government responsible for the
contractors' infringement of any patents during the course of
performance of the contract; the patent owner must bring her/his action
against the Government, not the contractor. 

                  Sometimes the Government does not wish to fully
delegate its eminent domain power to a contractor. This is accomplished
by inclusion in the contract of the "Patent Indemnity" clause [FAR
clause 52.227-3] which obligates the contractor who infringes a patent
to indemnify the Government for any liability it incurs. 


<---------------end NASA note------------------------------>

Final note, the case law in the USA is that the measure of the
compensation is "what the owner has lost, not what the taker has 
gained,"  Leesona (599 F.2d at 969).   This is important
since the taking of a patent with negligible sales, or to
serve a population that cannot afford a product, isn't much
of a loss to the patent owner.  Of course, each country 
will have its own national laws on compensation.


  Jamie

-- 
James Love / Director, Consumer Project on Technology
http://www.cptech.org / love@cptech.org
P.O. Box 19367, Washington, DC 20036
voice 202.387.8030 / fax 202.234.5176