1993 Executive Order concerning NAFTA and government use of patents

[James Love <love@cptech.org>]

Richard Wilder from WIPO has pointed out the US government issued 
Executive Order 12889 regarding the implementation of NAFTA. Sec. 6 
of this Executive Order has references to US government use of patents.  
The EO is on the web here:

http://www.pub.whitehouse.gov/uri-res/I2R?urn:pdi://oma.eop.gov.us/1994/1/4/4.text.2

In this Executive Order, President Clinton formally waives the 
requirement in NAFTA 1709.10.b to seek advance authorization from the 
patent owner on "reasonable commercial terms and conditions,"  if use
is by or for the government.  The government or its contractors 
are required to notify patent owners of the use, if there are reasonable 
grounds to know an invention is covered by a valid patent, but the
government can proceed with use directly without seeking a license.
(The patent owner has the right to seek compensation for the patent use
in a court of law, but cannot enjoin the government or its contractors
for the use, under 28 USC 1498). 

  Jamie


                          THE WHITE HOUSE

                    Office of the Press Secretary
________________________________________________________________________
For Immediate Release                                  December 28, 1993



                        EXECUTIVE ORDER 12889

                            - - - - - -

      IMPLEMENTATION OF THE NORTH AMERICAN FREE TRADE AGREEMENT


     By the authority vested in me as President by the Constitution and
the laws of the United States of America, including the North American
Free Trade Agreement Implementation Act (Public Law 103-182, 107 Stat.
2057) (the NAFTA Implementation Act) and section 302 of title 3, United
States Code, and in order to implement the North American Free Trade
Agreement (NAFTA), it is hereby ordered:

   [snip]


     Sec. 6.  Government Use of Patented Technology.  (a) Each agency
shall, within 30 days from the date this order is issued, modify or
adopt procedures to ensure compliance with Article 1709(10) of the NAFTA
regarding notice when patented technology is used by or for the Federal
Government without a license from the owner, except that the requirement
of Article 1709(10)(b) regarding reasonable efforts to obtain advance
authorization from the patent owner:

     (1) is hereby waived for an invention used or manufactured
          by or for the Federal Government, except that the
          patent owner must be notified whenever the agency or
          its contractor, without making a patent search, knows
          or has demonstrable reasonable grounds to know that
          an invention described in and covered by a valid
          United States patent is or will be used or
          manufactured without a license; and

     (2) is waived whenever a national emergency or other
          circumstances of extreme urgency exists, except that
          the patent owner must be notified as soon as it is
          reasonably practicable to do so.

     (b) Agencies shall treat the term "remuneration" as used in
Articles 1709(10)(h) and (j) and 1715 of the NAFTA as equivalent to
"reasonable and entire compensation" as used in section 1498 of title
28, United States Code.

     (c) In addition to the general provisions of section 7 of this
order regarding enforceable rights, nothing in this order is intended to
suggest that the giving of notice to a patent owner under Article
1709(10) of the NAFTA constitutes an admission that the Federal
Government has infringed a valid privately-owned patent.

     Sec. 7.  Judicial Review.  This order does not create any right or
benefit, substantive or procedural, enforceable at law by a party
against the United States, its agencies, its officers, or any person.



Section 1709 of NAFTA is on the web here:

http://www.nafta-sec-alena.org/english/nafta/chap-171.htm#A1709


I won't include it all here, but this is the patent provisions of
NAFTA, and it includes, in 1709.10, the provisions for use without
authorization by the patent owner, which are nearly the same as
Article 31 of the TRIPS.

-- 
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