Patents Ordinance, 2000 — section 59

59. Powers of Controller in granting compulsory licenses..—1[(1) On request, made to the Controller after the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last, the Controller may issue a non-voluntary licence to prevent the abuses which might result from the exercise of the rights conferred by the patent, for example, failure to work.]

(2)Notwithstanding the provisions of sub-section (1), a non-voluntary license shall not be issued if the owner of the patent satisfies the Controller that circumstances exist which justify the non-exploitation or insufficient exploitation of the patented invention in Pakistan.

(3)The decision issuing the non-voluntary license shall fix

(i)the scope and function of the license;

(ii)the time limit within which the licensee must begin to exploit the patented invention; and

(iii)the amount of the adequate remuneration to be paid to the owner of the patent and the conditions of payment.

(4)The beneficiary of the non-voluntary license shall have the right to exploit the patented invention in Pakistan according to the terms set out in the decision issuing the license, shall commence the exploitation of the patented invention within the time limit fixed in the said decision and, thereafter, shall exploit the patented invention sufficiently.

(5)If the invention claimed in a patent, hereinafter referred to as “later patent”, cannot be exploited in Pakistan without infringing a patent granted on the basis of an application benefiting from an earlier filing or, where appropriate, priority date, hereinafter referred to as “earlier patent”, and provided that the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent, the Controller, upon the request of the owner of the later patent, may issue a non-voluntary license to the extent necessary to avoid infringement of the earlier patent.

(6)Where a non-voluntary license is issued under sub-section 2[(5)] the Controller upon the request of the owner of the earlier patent shall issue a non-voluntary license in respect of the later patent.

(7)In the case of a request for the issuance of a non-voluntary license under sub-sections 3 [(5)] and 3[(6)] sub-section 3[(3)] shall apply mutatis mutandis with the provision that no time limit needs to be fixed.

(8)In the case of a non-voluntary license issued under sub-section 4[(5)] the transfer may be made only with the later patent, or, in the case of a non-voluntary license issued under sub-section 4 [(6)] only with the earlier patent. 1 Subs. by the Patents (Amdt.) Ordinance, 2002 (95 of 2002) s. 14, for sub-section (1). 2 Subs. Ibid, for “the brackets and figure (4)”. 3 Subs. ibid., for the brackets and figures (3), (4) and (2). 4 Subs. ibid., for the brackets and figures (3) and (4).

(9)The request for the issuance of a non-voluntary license shall be subject to payment of the prescribed fee.

(10)The provisions of sub-sections (2) to (10) of section 58 shall apply mutatis mutandis for issuance of a non-voluntary license under this section. CHAPTER XVII PROCEEDINGS FOR INFRINGEMENT OF PATENTS