[Ip-health] Korea Compulsory License Request for Glivec (Gleevec) patents

[James Love]

In Korea today, NGOs are asking that the government grant a
compulsory license for Glivec (known as Gleevec in USA, or by
the generic name: Imatinib Mesylate or STI-571), which is an
important  cancer drug marketed by Novartis for a very high
price.  They are working with IPLeft, a South Korean lawyers
group.  I believe the Korean NGOs will be publishing some
details of the case soon.  I assume they will ask the Korean
government to follow the WTO Doha Declaration, which calls
upon governments to implement patent laws "in a manner
supportive of WTO Members' right to protect public health and,
in particular, to promote access to medicines for all."

For those following this case, the following are a few provisions
from the South Africa Patent law in English, from the web page of
the Korean Intellectual Property Office.

Jamie Love

http://www.kipo.go.kr/ehtml/eActIndex.html

     Article 107 Adjudication for Grant of Non-exclusive
                           License

(1) Where a patented invention falls under any of the
following subparagraphs, a person who intends to work the
patented invention may request the Commissioner of the
Korean Intellectual Property Office to adjudicate
(hereinafter referred to as an "adjudication") for the
authorization of a non-exclusive license thereon; however, a
request for adjudication under the following subparagraphs
(i) and (ii) may only be made if consultations with the
patentee or exclusive licensee is not possible or no
agreement is reached at the consultation:

   (i) where the patented invention has not been worked for
     more than three consecutive years in the Republic of
     Korea, except in the case of natural disaster,
     unavoidable circumstances or other justifiable reasons
     prescribed by Presidential Decree;

   (ii) where the patented invention has not continuously
     been worked commercially or industrially in the
     Republic of Korea on a substantial scale during a
     period of three years or more without justification, or
     where the domestic demand for the patented invention
     has not been satisfied to an appropriate extent and
     under reasonable conditions;

   (iii) where the working of the patented invention is
     necessary for public non-commercial use; or

   (iv) where the working of a patented invention is
     necessary to remedy a practice determined to be anti-
     competitive after the judicial or administrative
     process.

(2) The provisions of paragraph (1)(i) and (ii) shall not
apply unless a period of four years has lapsed from the
filing date of the application for to the patented
invention.

(3) In adjudication for the authorization of a non-exclusive
license, the Commissioner shall consider the necessity of
each and every claim.

(4) In adjudication for the authorization of a non-exclusive
license, the Commissioner shall impose such conditions that
the use of patented inventions through the non-exclusive
license shall be limited predominantly to the supply of the
domestic market; however, this provision need not apply
where the authorization is ruled based on the request set
forth in subparagraph (1)(iv).

(5) In adjudication for the authorization of a non-exclusive
license set forth in subparagraph (1)(i), the Commissioner
may take into account the need to amend anti-competitive
practices in determining the amount of remuneration.
(6) With respect to semi-conductor technology, the request
for adjudication can be made only in the cases set forth in
subparagraph (1)(iii) and (1)(iv).

            Article 108 Submission of Response

Where a request for adjudication has been made the
Commissioner of the Korean Intellectual Property Office
shall transmit a copy of the written request to the patentee
or exclusive licensee mentioned in the request and to any
other persons having any registered right relating to the
patent, and shall give them an opportunity to submit a
response within the time limit.

  Article 109 Solicitation of Opinion from the Intellectual
                           Property
                  Rights Dispute Committee

Before making an adjudication, the Commissioner of the
Korean Intellectual Property Office shall solicit an opinion
from the Intellectual Property Rights Dispute Committee
established under Article 29 of the Invention Protection
Law.

           Article 110 Formality of Adjudication

(1) An adjudication shall be made in writing and shall state
the reasons therefor.
(2) The following matters shall be specified in an
adjudication under paragraph (1):
   (i) the scope and duration of the non-exclusive license;
     and
   (ii) the remuneration for the license and the method and
   time of payment.

     [snip]

     Article 115 Restriction on Reason for Objections to
                        Adjudication

  Where a request for an administrative trial has been filed
under Article 3(1) of the Administrative Trial Law or a
revocation action has been brought under the Administration
Litigation Law as to the adjudication, the remuneration
determined in the adjudication shall not be a basis for
objection.

    [snip]

      Article 125 Report on Working of Patent

The Commissioner of the Korean Intellectual Property Office
may require a patentee, exclusive licensee or non-exclusive
licensee to report as to whether the patented invention has
been worked or not, the extent of such working, etc.

-- 
James Love
Consumer Project on Technology
P.O. Box 19367, Washington, DC 20036
http://www.cptech.org, mailto:love@cptech.org
voice: 1.202.387.8030 fax 1.202.234.5176 mobile 1.202.361.3040