Re: Helping Developing Countries with IP issues

On 6/9/97, James Love <love[_at_]cptech.org> wrote:
>
> On Fri, 6 Jun 1997, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
> >
> > Jamie Love <love[_at_]cptech.org> writes:
> > >
> > > Many South American countries were astounded to learn that U.S.
> > > antitrust authorities or courts often impose compulsory licensing
> > > of copyrights or patents,
> >
> > Actually, I am astounded to learn this too. I would appreciate any
> > case cites, especially from the last 20 years or so.
>
> I have several examples, mostly from the Patent area, in my recent
> paper from the Belo Horizonte FTAA Workshop on Intellectual Property,
> at http://www.cptech.org/pharm/belopaper.html

Among your examples, you point to West ("in 1996 the U.S. Department of Justice _ordered_ West Publishing, a legal publisher, to issue a compulsory license for citations to federal and state court opinions") and Novartis ("The FTC required divestiture of several products, and _ordered_ compulsory licenses of intellectual property rights for a number of other healthcare inventions"). I don't know about the other examples you cite, but these at least were _negotiated_ licenses, compulsory only in the sense that because they were incorporated in consent decrees, the licensor could be held in contempt for failure to abide by the agreement. It's simply not correct to say that DOJ or the FTC "ordered" anybody to do anything. DOJ and FTC bargained for those licenses in lieu of attmpting to block the subject acquisitions on antitrust grounds. Had they been put to their proof, the agencies might have gotten an injunction blocking the mergers, but it is doubtful that the court would have imposed a "compulsory" license. You also point to the government's "march-in" rights under Bayh-Dole, but this is a condition of accepting federal research assistance, and participation is voluntary. These are not examples of compulsory licensing in the sense that the term is ordinarily used.

John Noble
<jnoble[_at_]dgsys.com> Received on Tue Jun 10 1997 - 15:16:13 GMT