When deciding upon the terms upon which licenses for the use of patented drugs are to be granted, a member state must not take into account issues other than those properly involved in such decisions. Protection of existing licences were not a proper consideration, and operated unlawfully to restrict trade.
Europa 1. Articles 30 and 36 of the Treaty must be interpreted as precluding the authorities of Member States competent to settle, in the absence of agreement, the terms of licences of right from relying upon provisions of national legislation in order to refuse the licensee of right authorization to import the patented product from non-member countries where the proprietor of the patent manufactures the product within the national territory and in order to grant such authorization where the proprietor of the patent works his patent by importing the product from other Member States of the Community. Such a practice is discriminatory because it encourages proprietors of patents to manufacture patented products within the national territory rather than to import them from other Member States and does not correspond to any requirement for the safeguarding of rights constituting the specific subject-matter of the industrial and commercial property. 2. Articles 47 and 209 of the Act of Accession of 1985, according to which the holder (or his beneficiary) of a patent for a pharmaceutical product filed in a Member State at a time when a product patent could not be obtained in Spain or Portugal for that product may rely upon the rights granted by the patent in order to prevent the import and marketing of that product in the existing Member State or States where that product enjoys patent protection, even if that product was put on the market in Spain or Portugal for the first time by him or with his consent, must be interpreted to the effect that the authorities of the Member States competent to settle, in the absence of agreement, the conditions of licences of right may, on the basis of those provisions and in derogation from the principles laid down by Articles 30 and 36 of the Treaty, prohibit the licensee from importing from Spain and Portugal a patented pharmaceutical product if national law confers upon the proprietor of the patent the right to prevent imports and if the proprietor exercises the right conferred upon him by Articles 47 and 209.
Times 08-Dec-1992, [1992] ECR I-5335, C-191/90, [1992] EUECJ C-191/90
Bailii
Patents Act 1977 46
European
Cited by:
Cited – Oracle America Inc v M-Tech Data Ltd SC 27-Jun-2012
The appellant complained that the respondent had imported into the European Economic Area disk drives bearing its trade marks in breach of the appellant’s rights. The respondent had argued that the appellant had abused its position by withholding . .
Lists of cited by and citing cases may be incomplete.
Updated: 03 September 2021; Ref: scu.160508
