The Peruvian Patent Office (PPO) last month approved and published Resolution No. 002706-2019/DIN-INDECOPI, which sets the guidelines for the compulsory licensing of patents in Peru. The guidelines provide clarity on the procedure that must be followed when requesting such license.
Below we pick out four key features from the guidelines.
First is that the PPO is responsible for granting or denying a compulsory license application while the Administrative Court of Appeals will deal with any dispute over the PPO’s decision.
Secondly, it states that the compulsory license application must include:
Thirdly, it details the particularities that must be taken into consideration for each of the four compulsory licenses available in Peru.
(a) Compulsory license for lack of exploitation of the patent: this requires compliance of the admissibility requirements.
(b) Compulsory license for public interest reasons, emergency or national security: this requires a decree declaring the existence of current public interest reasons, emergency or national security. The compliance of the admissibility requirements of application will also be evaluated.
It does not require applicants to prove that they had previously attempted to obtain a license from the patent holder. The reasons that led to the issuance of the decree cannot be questioned by the patent holder.
(c) Compulsory license for practices that affect free competition: prior to the submission of the application, there is a requirement for a resolution that there is an existence of practices that affect free competition. The reasons that gave rise to the issuance of the resolution cannot be questioned by the patent holder.
(d) Compulsory license for dependence on a third party patent: this requires compliance of the admissibility requirements. Upon absolution of the transfer of the application, the holder of the first patent may request a cross-license that allows the holder to exploit the invention claimed in the second patent.
Fourth, and after evaluating all the relevant elements, the opinion of the Economic Studies Department of PPO will be required on the amount of compensation for the holder of the licensed patent.
It is also possible to request confidentiality over the information presented, the scope of the granted license, the available remedies, and the grounds for revocation and/or modification of a license.
In our opinion, the guidelines help applicants to clearly understand what lies ahead when initiating the compulsory licensing procedure.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice.
Adriana Barrera (Partner)
Jonathan Lahura (Associate)