Compulsory licenses

I'll add more content to this page later. Right now, here are some examples of US statutes that provide for the compulsory licenses of patented inventions.

Statutes regarding compulsory licenses on patents, in the United States

28 USC 1498 - Patent and copyright cases
28 USC 1498(a). http://www.gpo.gov/fdsys/granule/USCODE-2011-title28/USCODE-2011-title28-partIV-chap91-sec1498/content-detail.html

42 USC Sec 2183 - Nonmilitary utilization (patents on atomic energy)
http://www.gpo.gov/fdsys/granule/USCODE-2010-title42/USCODE-2010-title42-chap23-divsnA-subchapXII-sec2183

See also:

  • Sec. 2181 - Inventions relating to atomic weapons, and filing of reports
  • Sec. 2182 - Inventions conceived during Commission contracts; ownership; waiver; hearings
  • Sec. 2183 - Nonmilitary utilization
  • Sec. 2184 - Injunctions; measure of damages
  • Sec. 2185 - Prior art
  • Sec. 2186 - Commission patent licenses
  • Sec. 2187 - Compensation, awards, and royalties
  • Sec. 2188 - Monopolistic use of patents
  • Sec. 2189 - Federally financed research
  • Sec. 2190 - Saving clause for prior patent applications

42 U.S.C. 7608 - MANDATORY LICENSING
http://www.gpo.gov/fdsys/granule/USCODE-2011-title42/USCODE-2011-title42-chap85-subchapIII-sec7608

This involves standards for the Clean Air Act.

§7608. Mandatory licensing
Whenever the Attorney General determines, upon application of the Administrator—
(1) that—
(A) in the implementation of the requirements of section 7411, 7412, or 7521 of this title, a right under any United States letters patent, which is being used or intended for public or commercial use and not otherwise reasonably available, is necessary to enable any person required to comply with such limitation to so comply, and
(B) there are no reasonable alternative methods to accomplish such purpose, and

(2) that the unavailability of such right may result in a substantial lessening of competition or tendency to create a monopoly in any line of commerce in any section of the country,

the Attorney General may so certify to a district court of the United States, which may issue an order requiring the person who owns such patent to license it on such reasonable terms and conditions as the court, after hearing, may determine. Such certification may be made to the district court for the district in which the person owning the patent resides, does business, or is found.

42 U.S.C. 16192 - NEXT GENERATION LIGHTING INITIATIVE
http://www.gpo.gov/fdsys/granule/USCODE-2010-title42/USCODE-2010-title42-chap149-subchapIX-partA-sec16192

(h) Intellectual property
The Secretary may require (in accordance with section 202(a)(ii) of title 35, section 2182 of this title, and section 5908 of this title) that for any new invention developed under subsection (e)—
(1) that the Industry Alliance participants who are active participants in research, development, and demonstration activities related to the advanced solid-state lighting technologies that are covered by this section shall be granted the first option to negotiate with the invention owner, at least in the field of solid-state lighting, nonexclusive licenses and royalties on terms that are reasonable under the circumstances;
(2)(A) that, for 1 year after a United States patent is issued for the invention, the patent holder shall not negotiate any license or royalty with any entity that is not a participant in the Industry Alliance described in paragraph (1); and
(B) that, during the year described in subparagraph (A), the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested participant in the Industry Alliance described in paragraph (1); and
(3) such other terms as the Secretary determines are required to promote accelerated commercialization of inventions made under the Initiative.

42 U.S.C. 17231 - ENERGY STORAGE COMPETITIVENESS
http://www.gpo.gov/fdsys/granule/USCODE-2011-title42/USCODE-2011-title42-chap152-subchapV-partD-sec17231

(h) (7) Intellectual property
In accordance with section 202(a)(ii) of title 35, section 2182 of this title, and section 5908 of this title, the Secretary may require, for any new invention developed under this subsection, that—
(A) if an industrial participant is active in a 1 energy storage research center established under this subsection relating to the advancement of energy storage technologies carried out, in whole or in part, with Federal funding, the industrial participant be granted the first option to negotiate with the invention owner, at least in the field of energy storage technologies, nonexclusive licenses, and royalties on terms that are reasonable, as determined by the Secretary;
(B) if 1 or more industry participants are active in a center, during a 2-year period beginning on the date on which an invention is made—
(i) the patent holder shall not negotiate any license or royalty agreement with any entity that is not an industrial participant under this subsection; and
(ii) the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested industrial participant under this subsection; and

(C) the new invention be developed under such other terms as the Secretary determines to be necessary to promote the accelerated commercialization of inventions made under this subsection to advance the capability of the United States to successfully compete in global energy storage markets.

30 U.S.C. 937 - CONTRACTS AND GRANTS (Black Lung disease)
http://www.gpo.gov/fdsys/granule/USCODE-1997-title30/USCODE-1997-title30-chap22-subchapIV-partC-sec937
Context: Title 30 - MINERAL LANDS AND MINING, CHAPTER 22 - MINE SAFETY AND HEALTH, SUBCHAPTER IV - BLACK LUNG BENEFITS, Sec. 937 - Contracts and grants

Any grant made pursuant to this subsection shall be conditioned upon all information, uses, products, processes, patents, and other developments resulting from such research being available to the general public, except to the extent of such exceptions and limitations as the Secretary of Health and Human Services may deem necessary in the public interest.

35 U.S.C. 271 - INFRINGEMENT OF PATENT
http://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-title35-partIII-chap28-sec271
Context: The Affordable Care Act created a limitation on remedies for infringement of patent when a company selling a biologic drug failed to provide timely disclosure of patents to potential suppliers of biosimilar products.

35 USC 271 (e)(6)(B) In an action for infringement of a patent described in subparagraph (A), the sole and exclusive remedy that may be granted by a court, upon a finding that the making, using, offering to sell, selling, or importation into the United States of the biological product that is the subject of the action infringed the patent, shall be a reasonable royalty.

35 U.S.C. 203 - MARCH-IN RIGHTS
http://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-title35-partII-chap18-sec203

Context: Title 35 - PATENTS, PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS, CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

See also:

  • 200.Policy and objective.
  • 201.Definitions.
  • 202.Disposition of rights.
  • 203.March-in rights.
  • 204.Preference for United States industry.
  • 205.Confidentiality.
  • 206.Uniform clauses and regulations.
  • 207.Domestic and foreign protection of federally owned inventions.
  • 208.Regulations governing Federal licensing.209.Licensing federally owned inventions.
  • 210.Precedence of chapter.
  • 211.Relationship to antitrust laws.
  • 212.Disposition of rights in educational awards.

35 U.S.C. 283 - INJUNCTION
http://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-title35-partIII-chap29-sec283

Today, most US compulsory licenses are those involving injunction proceedings, or more concretely, when a judge withholds an injunction and allows infringement, subject to a court ordered royalty. This case have accelerated following the 2006 decision in eBay v MercExchange.

SUPREME COURT OF THE UNITED STATES
EBAY INC. ET AL. v. MERCEXCHANGE, L. L. C.
Argued March 29, 2006—Decided May 15, 2006

Held: The traditional four-factor test applied by courts of equity when considering whether to award permanent injunctive relief to a prevailing plaintiff applies to disputes arising under the Patent Act. That test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury; (3) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. The decision to grant or deny such relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion. These principles apply with equal force to Patent Act disputes

19 U.S.C. 1337 - UNFAIR PRACTICES IN IMPORT TRADE
http://www.gpo.gov/fdsys/granule/USCODE-2011-title19/USCODE-2011-title19-chap4-subtitleII-partII-sec1337/content-detail.html

unless, after considering the effect of such exclusion or order upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, the Commission finds that such exclusion or order should not be issued.

See, for example, this August 3, 2013 letter from Ambassador Michael Froman (PDF here), in a dispute involving patents held by Samsung, infringed by Apple.

Antitrust law

This is a complex area, as regards statutes.

See, for starters, the US DOJ Antitrust Division Manual, Fifth Edition, April 2015 Chapter II. Statutory Provisions and Guidelines of the Antitrust Division, U.S. Department of Justice, Antitrust Division Page II-1, Chapter II. Statutory Provisions and Guidelines of the Antitrust Division.

http://keionline.org/sites/default/files/chapter2.pdf

I'll add a few more cites on this later.

15 U.S.C. 45 - UNFAIR METHODS OF COMPETITION UNLAWFUL; PREVENTION BY COMMISSION
http://www.gpo.gov/fdsys/granule/USCODE-2011-title15/USCODE-2011-title15-chap2-subchapI-sec45

Context: Title 15 - COMMERCE AND TRADE, CHAPTER 2 - FEDERAL TRADE COMMISSION; PROMOTION OF EXPORT TRADE AND PREVENTION OF UNFAIR METHODS OF COMPETITION, SUBCHAPTER I - FEDERAL TRADE COMMISSION, Sec. 45 - Unfair methods of competition unlawful; prevention by Commission

(a) (1) Unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce, are hereby declared unlawful.

Sherman Antitrust Act, 15 USC 1-7

15 U.S. Code § 1 - Trusts, etc., in restraint of trade illegal; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec1
Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is declared to be illegal. Every person who shall make any contract or engage in any combination or conspiracy hereby declared to be illegal shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000, or by imprisonment not exceeding 10 years, or by both said punishments, in the discretion of the court.

15 U.S. Code § 2 - Monopolizing trade a felony; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec2
Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several States, or with foreign nations, shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000, or by imprisonment not exceeding 10 years, or by both said punishments, in the discretion of the court.

Wilson Tariff Act, 15 USC 8-11

15 U.S. Code § 8 - Trusts in restraint of import trade illegal; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec8
Every combination, conspiracy, trust, agreement, or contract is declared to be contrary to public policy, illegal, and void when the same is made by or between two or more persons or corporations, either of whom, as agent or principal, is engaged in importing any article from any foreign country into the United States, and when such combination, conspiracy, trust, agreement, or contract is intended to operate in restraint of lawful trade, or free competition in lawful trade or commerce, or to increase the market price in any part of the United States of any article or articles imported or intended to be imported into the United States, or of any manufacture into which such imported article enters or is intended to enter. Every person who shall be engaged in the importation of goods or any commodity from any foreign country in violation of this section, or who shall combine or conspire with another to violate the same, is guilty of a misdemeanor, and on conviction thereof in any court of the United States such person shall be fined in a sum not less than $100 and not exceeding $5,000, and shall be further punished by imprisonment, in the discretion of the court, for a term not less than three months nor exceeding twelve months.

Clayton Act, 15 USC 12-27

15 U.S.C. 12 - DEFINITIONS; SHORT TITLE
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec12

§12. Definitions; short title
(a) “Antitrust laws,” as used herein, includes the Act entitled “An Act to protect trade and commerce against unlawful restraints and monopolies,” approved July second, eighteen hundred and ninety [the Sherman Antitrust act]; sections seventy-three to seventy-six, inclusive, of an Act entitled “An Act to reduce taxation, to provide revenue for the Government, and for other purposes,” of August twenty-seventh, eighteen hundred and ninety-four [ the Wilson Tariff Act]; an Act entitled “An Act to amend sections seventy-three and seventy-six of the Act of August twenty-seventh, eighteen hundred and ninety-four, entitled ‘An Act to reduce taxation, to provide revenue for the Government, and for other purposes,’ ” approved February twelfth, nineteen hundred and thirteen [; and also this Act.

“Commerce,” as used herein, means trade or commerce among the several States and with foreign nations, or between the District of Columbia or any Territory of the United States and any State, Territory, or foreign nation, or between any insular possessions or other places under the jurisdiction of the United States, or between any such possession or place and any State or Territory of the United States or the District of Columbia or any foreign nation, or within the District of Columbia or any Territory or any insular possession or other place under the jurisdiction of the United States: Provided, That nothing in this Act contained shall apply to the Philippine Islands.

The word “person” or “persons” wherever used in this Act shall be deemed to include corporations and associations existing under or authorized by the laws of either the United States, the laws of any of the Territories, the laws of any State, or the laws of any foreign country.

(b) This Act may be cited as the “Clayton Act”.

15 U.S. Code § 13 - Discrimination in price, services, or facilities
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec13

15 U.S. Code § 18 - Acquisition by one corporation of stock of another
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec18
No person engaged in commerce or in any activity affecting commerce shall acquire, directly or indirectly, the whole or any part of the stock or other share capital and no person subject to the jurisdiction of the Federal Trade Commission shall acquire the whole or any part of the assets of another person engaged also in commerce or in any activity affecting commerce, where in any line of commerce or in any activity affecting commerce in any section of the country, the effect of such acquisition may be substantially to lessen competition, or to tend to create a monopoly. . . .

Commentary

2014:2 KEI Research Note: Recent United States Compulsory Licenses. March 7, 2014

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