[Pharm-policy] US Jordan FTA narrowing grounds for compulsory licensing of patents

[James Love]

Thanks to Robert Weissman for calling attention to the IPR sections of
the Jordan/US FTA.  

In the text of the US/Jordon free trade agreement, the US government has
agreed to bilateral restrictions on compulsory licensing, and to severe
limitations on the use of patent exceptions for research purposes. 
Also, Jordan is not permitted to exempt methods of doing business or
software from its patent laws.

In essence, it appears the US government would not be permitted to do
the following things:

-   Enact Representative Sherrod Brown's compulsory licensing
legislation,
-   Provide broader patent exceptions or compulsory licensing for
medical research, such as the proposals by the NCI advisory group on
Mouse Genomics, or those made by Professor Merz. 
-   Enforce the current US clean air provisions on compulsory licensing
of patents on pollution control technologies
-   Enforce the current US compulsory licensing provisions for civilian
atomic energy
-   Permit the State of Florida or other states to disregard patents
under current US doctrine of sovereign immunity.

without violating the terms of this agreement.   
 

Here are some sections of the agreement.


   Bolar provisions

19.    If a Party permits the use by a third party of a subsisting
patent to support an application for marketing approval of a product,
the Party shall provide that any product produced under this authority
shall not be made, used or sold in the territory of the Party other than
for purposes related to meeting requirements for marketing approval, and
if export is permitted, the product shall only be exported outside the
territory of the Party for purposes of meeting requirements for
marketing approval in the Party or in another country that permits the
use by a third party of a subsisting patent to support an application
for marketing approval of a product.


  Complusory licening provisions


20.    Neither Party shall permit the use of the subject matter of a
patent without the authorization of the right holder except in the
following circumstances:

(a)    to remedy a practice determined after judicial or administrative
process to be anti-competitive;

(b)     in cases of public non-commercial use or in the case of a
national emergency or other circumstances of extreme urgency, provided
that such use is limited to use by government entities or legal entities
acting under the authority of a government; or

(c)    on the ground of failure to meet working requirements, provided
that importation shall constitute working.


Where the law of a Party allows for such use pursuant to sub-paragraphs
(a), (b) or (c), the Party shall respect the provisions of Article 31 of
TRIPS and Article 5A(4) of the Paris Convention.


  [snip]


    Health registration provisions:

Measures Related to Certain Regulated Products 
22.    Pursuant to Article 39.3 of TRIPS, each Party, when requiring, as
a condition of approving the marketing of pharmaceutical or of
agricultural chemical products that utilize new chemical entities,10 the
submission of undisclosed test or other data, or evidence of approval in
another country,11 the origination of which involves a considerable
effort, shall protect such information against unfair commercial use. 
In addition, each Party shall protect such information against
disclosure, except where necessary to protect the public, or unless
steps are taken to ensure that the information is protected against
unfair commercial use.

23.    With respect to pharmaceutical products that are subject to a
patent:

(a)     each Party shall make available an extension of the patent term
to compensate the patent owner for unreasonable curtailment of the
patent term as a result of the marketing approval process.

(b)    the patent owner shall be notified of the identity of any third
party requesting
marketing approval effective during the term of the patent.





MEMORANDUM OF UNDERSTANDING
ON ISSUES RELATED TO THE PROTECTION OF
INTELLECTUAL PROPERTY RIGHTS
UNDER THE AGREEMENT BETWEEN THE UNITED STATES AND JORDAN
ON THE ESTABLISHMENT OF A FREE TRADE AREA

The Government of the United States of America ("United States") and the
Government of the Hashemite Kingdom of Jordan ("Jordan"), recognizing
the need to promote adequate and effective protection of intellectual
property rights, to provide enhanced intellectual property protection to
account for the latest technological developments, and to promote
greater efficiency and transparency in the administration of
intellectual property systems in order to strengthen the international
trading system;
Agree,

. . . 

5.    Jordan shall take all steps necessary to clarify that the
exclusion from patent protection of "mathematical methods" in Article
4(B) of Jordan's Patent Law does not include such "methods" as business
methods or computer-related inventions.

 . . . 


Agreement, with the exception of paragraph 3, which shall be implemented
within two years from the date of entry into force of the Agreement.
Done at Washington, in duplicate, this twenty-fourth day of October,
2000, which corresponds to this twenty-sixty day of Rajab, 1421, in the
English language.  An Arabic language text shall be prepared, which
shall be considered equally authentic upon an exchange of diplomatic
notes confirming its conformity with the English language text.  In the
event of a discrepancy, the English language text shall prevail.

FOR THE GOVERNMENT OF THE    FOR THE GOVERNMENT OF THE
UNITED STATES OF AMERICA:    HASHEMITE KINGDOM OF JORDAN:



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