WORLD TRADE  
ORGANIZATION  IP/C/W/534 
29 September 2009 
 (09-4552) 
Council for Trade-Realted Aspects 
of Intellectual Property Rights Original:   English 
 
 
 
REVIEW OF LEGISLATION 
 
Responses from Tonga to questions posed by Japan  
 
 
 By means of a communication from the Dele gation of Tonga, dated 16 September 2009, the 
Secretariat has received the following responses to  questions posed by Japan as circulated in 
document IP/C/W/532.  
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TONGA 
 
A. E
XPLOITATION BY GOVERNMENT OR PERSON  THEREBY AUTHORIZED  
 Industrial Property Act 1994 of Tonga provides for governmental use under 
Article 13(5)(a), which states "Where … public interest, in particular, … the development or other vital sector of the national economy so re quire, the Minister may decide that, even without 
the permission of the patentee, a government  agency or a third person designated by the 
Minister may exploit the invention, subject to th e payment of an equitable remuneration to the 
patentee."   
 1. Please explain how Article 13(5)(a) in Industrial Property Act 1994 of Tonga is consistent with the TRIPS Agreement, esp ecially regarding the following points: 
 
 What is included in the amendments proposed  in the "Industrial Property (Amendment) Bill 
2009", (which is currently being reviewed by Parlia ment), is the deletion of Section 13(5), together 
with the creation of new Section "16A Emergency Measures", which provides the answers to the questions raised by Japan.  The wording of S ection 16A is attached hereto, for reference. 
 
(a) Other use without authorization of the right holder shall be considered on its individual 
merits (Article 31(a) of the TRIPS Agreement); 
- Section 16A(1)(b) provides for exploitation by a third person of a patent without permission 
of owner, if the manner of exploitation is anti-competitive; 
   -  Section 16A(6) provides that the exploitation of patent by a third person can be authorized, 
in the field of semi-conductor tec hnology, for public non-commerce use; 
   -  Section 15 of the Act also allows the explo itation of patent without the owner's permission 
if the patented invention is not worked or insufficiently worked in Tonga. 
 IP/C/W/534 
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  (b) As a general rule, such use may only be permitted if, prior to such use, efforts to obtain 
authorization from the right holder have b een made on reasonable commercial terms 
and conditions and such efforts have not b een successful within a reasonable period of 
time (Article 31(b) of the TRIPS Agreement); 
 -  Section 16A (4) provides for this. 
 
(c) The requirement in the above (b) may be waived  in the cases of a national emergency or 
public non-commercial use (Article 31(b) of the TRIPS Agreement). 
 -  Section 16A (5) provides for this. 
  
 Once the Industrial Property (Amendment) Bill is passed by Parliament, the new Section 16A 
will become effective.    IP/C/W/534 
 Page 3 
 
 
   
ANNEX I 
 
Industrial Property (Amendment) Bill 2009 : Section 16A  
 
 
16A  Emergency Measures  
(1) The Minster may decide that, even without th e agreement of the owner of the patent, a 
Government agency or a third person designa ted by him may exploit a patented invention 
where the; 
 
(a) public interest, in particular, national security , nutrition, health or  the development of 
other vital sectors of the national economy so requires; or 
 
(b) Court has determined that the manner of exploitation, by the owner of the patent or 
licensee, is anti-competitive, and the Minister is satisfied that the exploitation of the 
invention in accordance with this s ubsection would remedy such practice. 
 (2) The exploitation of the patented invention sh all be limited to the purpose for which it was 
authorized and shall be subjected to the paym ent to the owner of an adequate remuneration 
taking into account the economic value of the Mi nister’s authorization, as determined in the 
said decision, and, where a decision has been ta ke under subsection 1(b), the need to correct 
anti-competitive practices.  
  (3) The Minister shall make his decision after hearing the owner of the patent and any interested 
person if they wish to be heard. 
 (4) A request for the Minister’s authorization sha ll be accompanied by evidence that the owner of 
the patent has received, from the person seeking authorization, a request for a contractual 
license, but that person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time. 
 
(5) Subsection (4) shall not apply in cases of –  
(a) national emergency or other circumstances of extreme urgency provided, however, 
that in such cases the owner of the patent shall be notified by the Minister’s decision 
as soon as reasonably practicable; 
 
(b) public non-commercial use;  and 
 (c) Anti-competitive practices determin ed as such by the Minister. 
 
(6) The exploitation of a patented invention in  the field of semi-conductor technology shall only 
be authorized either for public non-commercial u se or where the Minister has determined that 
the manner of exploitation of the patented inve ntion, by the owner of the patent or his 
licensee, is anti-competitive and if the Minister  is satisfied that the issuance of the non-
voluntary license would remedy such practice. 
 
(7) The authorization shall not exclude the:  
(a) conclusion of a license contract by the owner of the patent; 
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  (b) continued exercise, by the owner of the patent, of his  Rights under section 13(1); or 
  (c) Issuance of a non-voluntary license under section 15.  (8) Where a third person has been designated by the Minister, the authorization may only be 
transferred with the enterprise or business of that  person or with the part of the enterprise or 
business within the patented i nvention is being exploited. 
 (9) Where the exploitation of the invention by th e Government agency or third person designated 
by the Minister is authorized under subsection (1 ), it shall be predominantly for the supply of 
the market in Tonga and this authorization sha ll not apply where the exploitation is authorized 
under subsection (1) (b). 
 (10) Upon request of the owner of the patent of the Government agency or of the third person 
authorized to exploit the patented invention, th e Minister may, after hearing the parties vary 
the terms of the decision authorizing the exploita tion of the patented invention to the extent 
that changed circumstances justify such variation. 
 (11) (a) Upon the request of the owner of the patent, the Minister shall terminate the 
authorization if he is satisfied after hear ing the parties that the circumstances which 
led to his decision have ceased to exist and are unlikely to occur or that the 
Government agency or third person designate d by him has failed to comply with the 
terms of the decision. 
  (b) Notwithstanding paragraph (a), the Minister  shall not terminate the authorization if he 
is satisfied that the need for adequate pr otection of the legitimate interests of the 
Government agency or third person designa ted by him justifies the maintenance of 
the decision. 
  
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