COUNTRY : REPUBLIC OF CLOMBIA
Colombia is a member of the Andean Pact.
• Paris Convention for the protection of industrial property
• Patent Co-operation Treaty – PCT.
• Agreement on Trade Related Aspects of Intellectual Property Rights –TRIPS.
Upon expiry of 3 yrs. from the date of filing of the petition or 4 yrs. from the date of grant of the petition whichever is longer, the Colombian Patent office may grant compulsory licences to an interested party for the following reasons:
· • Mainly for the industrial manufacture of the product covered by the patent or, for full use of the patented process, but only if, at the time of the request, the patent had not been exploited in Colombia.
• If the exploitation of the invention had been suspended for more than one year.
• When, prior to applying for it, the proposed user has made efforts to obtain a contractual license from the patent holder on reasonable commercial terms and conditions and that such efforts were not successful within a reasonable period of time.
• The licensee shall exploit the licensed invention within a period of two years following the date the license was granted, unless that licensee is able to give valid reasons for inaction otherwise, at the patent owner’s request, the Colombian national office shall revoke the compulsory license.
• Following the declaration by Colombiain public interest, the existence of an emergency, or national security considerations, and only for so long as those considerations exist, the patent may be subject to compulsory licensing at any time.
• The Colombian Patent office shall specify the scope or extent of the compulsory license and, in particular, the term for which it is granted, the subject matter of the license, and the amount of remuneration and the conditions for its payment.
• The grant of a compulsory license for reasons of public interest shall not reduce the right of the patent owner to continue exploiting it.
• The Colombian Patent office may, either ex officio or at the request of a party, and after having obtained the consent of the national antitrust authority, grant compulsory licenses where practices are noted that are detrimental to the exercise of free competition, especially where they constitute an abuse by the patent owner of a dominant position in the market.
• The Colombian Patent office shall grant a license, upon request by the owner of a patent whose exploitation necessarily requires the use of another patent, and that right holder has been unable to secure a contractual license to the other patent on reasonable commercial terms. That license shall, without prejudice to be subject to the following conditions:
a) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
b) the owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; and,
c) the license authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
In addition compulsory licenses shall be subject to the following:
a) they shall be non-exclusive and may not be sublicensed;
b) they shall be non-assignable, except with the part of the business or goodwill which permits its industrial use. This shall be evidenced in writing and registered with the competent national office. Otherwise, those assignments or transfers shall not be legally binding;
c) they shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to them cease to exist and are unlikely to recur;
d) their scope and duration shall be limited to the purposes for which they were authorized;
e) in the case of patents protecting semi-conductor technology, a compulsory license shall be authorized only for public non-commercial use or to remedy a practice declared by the competent national authority to be anti-competitive
f) they provide for payment of adequate remuneration according to the circumstances of each case, taking into account the economic value of the license, without prejudice to the stipulations of article 66; and,
g) they shall be used predominantly for the supply of the domestic market.
It is pertinent to note that Compulsory licenses that fail to comply with the provisions above, shall be devoid of any legal effect whatsoever.
ParityPatents along with specialised Patent Lawyers and Patent Attorneys in Colombia, can assist you comprehensively with Compulsory Licence matters.
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