Australia: Compulsory licences now available for export of patented pharmaceuticals to developing companies

As of 25 August 2015, it is now possible for third parties to apply to the Federal Court of Australia for a compulsory licence to manufacture generic versions of patented pharmaceutical inventions ("PPI") for export to developing countries to address public health problems.

Background

Australia is a signatory to the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). The TRIPS Agreement sets out the minimum requirements for intellectual property protection for WTO member states.

The TRIPS Agreement was amended in 2005 by the TRIPS Protocol, which had the aim of providing developing countries with better access to medicines. Under the TRIPS Protocol, WTO member states with insufficient manufacturing capacity are able to import patented pharmaceutical products made under a compulsory licence from another WTO member state.

Compulsory licences were previously available under Australian patent law in circumstances where a patent is not being utilised, the patentee has been approached by a third party seeking a licence, and the patentee has refused to grant a licence "on reasonable terms and conditions". To date, no compulsory licences have been granted, prompting a 2012/2013 Productivity Commission inquiry into their effectiveness.

The Intellectual Property Laws Amendment Act 2015, which came into effect on 25 August 2015, does not implement the recommendations of the Productivity Commission but, rather, implements the TRIPS Protocol and introduces into the Patents Act a new form of compulsory licence. A PPI compulsory license enables generic Australian medicine producers to manufacture and export patented pharmaceuticals products to developing countries to address public health problems. It is important to note that a PPI compulsory license may be granted even if the patented pharmaceutical product is being sold in Australia and, as such, represents a significant addition to the existing compulsory license provisions.

PPI compulsory licences

A PPI compulsory licence means that the licensee does not infringe by manufacturing and exporting a patented pharmaceutical product if it is used to address a public health problem in an eligible country:

  • in circumstances of national emergency or other circumstances of extreme urgency; or
  • by the public non-commercial use of the patented pharmaceutical product (e.g., use by a government or a non-profit non-government organisation to address ongoing public health problems).

An eligible country is:

  • a country identified by the United Nations as a "least developed country" – such countries include Afghanistan, Bangladesh, Cambodia, Haiti and Nepal, as well as many African countries; or
  • a WTO member state with insufficient manufacturing capacity that has notified the TRIPS Council of its intention to make use of the PPI compulsory licence system as an importer.

Requirements for grant of PPI compulsory licences

The Federal Court may only grant a PPI compulsory licence if it is satisfied that:

  • the proposed use of the patented pharmaceutical product is to address a public health problem in the eligible importing country
  • the PPI compulsory licence is necessary
  • the application for the PPI compulsory licence has been made in good faith (i.e., a PPI compulsory licence should not be sought in order to pursue commercial objectives in Australia)
  • the eligible importing country has notified the Commissioner of Patents or the TRIPS Council
  • the patented pharmaceutical product is to be imported by the eligible importing country (or by an authorised third party importer)
  • the PPI compulsory licence applicant, the eligible importing country and any third party importer will take reasonable measures to prevent the patented pharmaceutical product being used for a purpose other than addressing a public health problem and
  • the PPI compulsory licence applicant has given the patentee an opportunity to voluntarily authorise use of the patented pharmaceutical product (unless there are circumstances of extreme urgency in the eligible importing country).

Remuneration of the patentee

The licensee must remunerate the patentee for the use of the patented pharmaceutical product. If the licensee and the patentee cannot agree on the terms for the licence, either party can ask the Federal Court to determine the remuneration. In determining adequate remuneration, the court will take into account the economic value to the eligible importing country of the use of the patented pharmaceutical product.

In circumstances of extreme urgency in the eligible importing country, the licensee does not have to wait for the remuneration to be agreed with the patentee or determined by the Federal Court – the licensee and the patentee can conduct their negotiations in parallel with the manufacturing and export of the patented pharmaceutical product.

In the absence of circumstances of extreme urgency, the licensee will need to wait for the remuneration to be agreed with the patentee or to be determined by the Federal Court.

Concluding remarks

According to the World Health Organization, "differential" or "tiered" pricing has reduced the cost of many drugs in developing countries. For example, the cost of anti-retroviral HIV/AIDS therapies has been reduced by up to 90% in low-income countries, while the same drugs continue to be sold at market price in developed counties. Differential pricing and other measures aimed at increasing the supply of affordable pharmaceuticals to developing countries have proven useful but, in addition, the United Nations Development Programme questioned the compatibility of the TRIPS Agreement with human rights law due to the impact of the Agreement on access to essential drugs in low-income countries. The PPI compulsory licence appears to go some way towards providing a solution to some of the problems posed by the TRIPS Agreement. It represents another step towards ameliorating the significant social and humanitarian issues associated with the undersupply of affordable pharmaceuticals to the developing world.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.