[Ip-health] US law on govt. use of patents

[Benjamin Krohmal]

Some have suggested that it may be helpful to re-post the the text of
Section 6 of U.S. Executive Order 12889 in light or recent criticisms
of Thailand's compulsory licenses over allegations that Thailand did
not engage in prior negotiations with the patent holders.  While
other sections of U.S. law clearly allow for government use of
patents without prior negotiations (for instance 28 U.S.C. 1498(a)),
the executive order states this very explicitly:

". . .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. . ."

It is worth noting that many of the TRIPS flexibilities that Thailand
has been criticized for using were included in the TRIPS agreement in
order to better reflect existing U.S. law.  Readers will note a
number of similarities between the wording of the Executive Order and
that of TRIPS Article 31.



United States Executive Order 12889 -Implementation of the North
American Free Trade Agreement

December 27, 1993

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=96182, 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:

Section 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 =91=91remuneration=92=92 as used in
Articles 1709(10)(h) and (j) and
1715 of the NAFTA as equivalent to =91=91reasonable and entire
compensation=92=92 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.

Benjamin Krohmal
Coordinator - Project on Medical Innovation
Knowledge Ecology International
Tel: +1-202-332-2670 ex. 14
Fax: +1-202-332-2673
ben.krohmal@keionline.org