Document ID: chunk:federal_register_of_legislation:C2004A04827:body:0:p3
Version: federal_register_of_legislation:C2004A04827
Segment Type: other
Provision Reference: 
Character Range: 4795–7623

to be taken to have been obtained by the patented process.

"(3) In deciding how the defendant is to adduce evidence for the purposes of subsection (2), the court is to take into account the defendant's legitimate interests in having business and manufacturing secrets protected.".

Application

10. The amendments made by this Part do not apply to an action for infringement of a patent that was pending before the court immediately before the commencement of this Part.

PART 4—COMPULSORY LICENCES

Compulsory licences

  11. Section 133 of the Principal Act is amended:

     (a) by inserting in subsection (2) ", subject to this section," after "may";

  (b) by inserting after subsection (3) the following subsections:

     "(3A) Before making the order, the court must be satisfied that the applicant has tried for a reasonable period, but without success, to obtain from the patentee in respect of the patented invention an authorisation to work the invention on reasonable terms and conditions.

     "(3B) If the patented invention cannot be worked by the applicant without his or her infringing another patent:

        (a) the court is to make the order only if the court is further satisfied that the patented invention involves an important technical advance of considerable economic significance on the invention ('other invention') to which the other patent relates; and

        (b) the court must further order that the patentee of the other invention:

            (i) must grant to the applicant a licence to work the other invention insofar as is necessary to work the patented invention; and

            (ii) is to be granted, if he or she so requires, a cross-licence on reasonable terms to work the patented invention; and

        (c) the court must direct that the licence granted by the patentee of the other invention may be assigned by the applicant:

            (i) only if he or she assigns the licence granted in respect of the patented invention; and

            (ii) only to the assignee of that licence.";

  (c) by adding at the end the following subsections:

     "(5) The patentee is to be paid in respect of a licence granted to the applicant under an order:

        (a) such amount as is agreed between the patentee and the applicant; or

        (b) if paragraph (a) does not apply—such amount as is determined by a prescribed court to be just and reasonable having regard to the economic value of the licence.

      "(6) The patentee or a prescribed court may revoke the licence if:

        (a) the patentee and the licensee are agreed, or the court on application made by either party finds, that the circumstances that justified the grant of the licence have ceased to exist and are unlikely to recur; and

        (b) the legitimate interests of the licensee are not likely