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Legal Foundations and Sources of Compulsory Liability Rules

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Mechanisms to Enable Follow-On Innovation

Part of the book series: Munich Studies on Innovation and Competition ((MSIC,volume 15))

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Abstract

The origins of the liability rules in intellectual property law are in the seventeenth century. Following industrialization, their application became more frequent and, being used to exploit inventions created in other countries, also controversial. The Paris Convention, which first addressed the instrument in 1925, left signatory states considerable leeway to enact compulsory licenses—an opportunity often used by developing countries. TRIPS narrowed down possible the scope of compulsory licenses and defined rules for their application on the procedural level. In the EU, compulsory licenses are subject to only limited harmonization and are mostly regulated on the national level. The UPC would offer little change to the situation. Generally, international law on compulsory licenses features little consideration for follow-on innovation, with the exception of compulsory licenses for dependent patents. However, both a patent holder and a follow-on innovator enjoy the fundamental rights to property and to conduct business. Under the ECHR, contracting states have broad freedom to enact compulsory licenses for functional efficiency and thus interfere with the patent holder’s right to property on the grounds of general interest. The interference remains proportional when it complies with the requirements of Art. 31 TRIPS.

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Notes

  1. 1.

    Anja Eikermann, “Article 31,” in WTO: Trade-Related Aspects of Intellectual Property Rights, ed. Peter-Tobias Stoll, Jan Busche, and Katrin Arend (Leiden: Martinus Nijhoff Publishers, 2009), 558, fn 15.

  2. 2.

    Ibid, 558.

  3. 3.

    Act for the Encouragement of Arts and Science, South Carolina (26 March 1784). Thorvald Solberg (ed.), Copyright Enactments of the United States 1793-1906, Copyright Office Bulletin No. 3, 2th ed. rev. (Washington: U.S. Government Printing Office 1906), 23 at 15-45. This provision was drafted to address the authors of books and also applied to inventors. See also Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 3.

  4. 4.

    Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 3.

  5. 5.

    Machlup, Economic Review of the Patent System, 5, and the following references.

  6. 6.

    For example, The Patents, Designs and Trademarks Act 1883, 46 & 47 Vict. c. 57, § 22 c) [no longer in force] (Eng.) recognized cases in which anyone is prevented from working or using to the best advantage an invention as ground for a compulsory license.

  7. 7.

    Jerome H. Reichman and Catherine Hasenzahl, Non-Voluntary Licensing of Patented Inventions. Historical Perspective, Legal Framework under TRIPS, and Overview of the Practice in Canada and the USA (Geneva: ICTSD, 2003), 10-11.

  8. 8.

    Paris Convention for the Protection of Industrial Property, The Hague Act (1925), adopted 6 November 1925, WIPO Lex No. TRT/Paris/005 (entry into force 1 June 1928), [hereinafter Act of Hague]. Since the Act of the Hague, further amendments to Art. 5 A PC have been made by the Acts of London and Lisbon. Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 3. Paris Convention for the Protection of Industrial Property (1883), adopted 20 March 1883, WIPO Lex No. TRT/Paris/008 (entry into force 7 July 1884), has been subject to a number of revisions. The acts that are still in force are from the Conferences of Revision in The Hague (1925), London (1934), Lisbon (1958), and Stockholm (1967). The Brussels 1900 and Washington 1911 Acts are no longer in force. The Stockholm Act of 14 July 1967 of the Paris Convention is the most recent revision and has the largest number of signatories (Art. 2.1 TRIPS). Georg Bodenhausen, Guide to the Appliction of the Paris Convention for the Protection of Industrial Property as Revised in Stockholm in 1967 (Geneva: BIRPI, 1968), 9.; World Intellectual Property Organization., WIPO Intellectual Property Handbook : Policy, Law and Use (WIPO Publication No 489), 2nd ed. (Geneva: WIPO, 2004), 241-242; and Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 3.

  9. 9.

    Nuno Pires de Carvalho, TRIPS Regime of Patent Rights, 3rd ed. (Alphen aan den Rijn: Wolters Kluwer, 2010), 125. The establishment of rights of national treatment (Art. 2 and 3) and priority (Art. 4) by the PC was intended to resolve these free-riding problems. World Intellectual Property Organization., WIPO Intellectual Property Handbook, 243-246.

  10. 10.

    The subsequent Act of Lisbon 1958 amended Art. 5 A (2) to explicitly address compulsory licenses. Reichman, Non-Voluntary Licensing of Patented Inventions. Annex: Historical overview of the evolution of the Article 5A of the Paris Convention. See also Bodenhausen, Guide to the Appliction of the Paris Convention, 71-72. Legislative measures that have the same effect as forfeiture may be referred to as revocation, repeal, or the annulment of a patent. Ibid, 69, 71.

  11. 11.

    Reichman, Non-Voluntary Licensing of Patented Inventions, 11. The national adoption of the provision was, however, controversial in several countries. Stephen P. Ladas, Patents, Trademarks, and Related Rights : National and International Protection, III vols., vol. I (Cambridge, MA: Harvard University Press, 1975), 530-531 (with references). According to Art. 5 A (3) PC of the Stockholm Act, forfeiture of patents is only allowed in cases in which the grant of compulsory licenses would not have been sufficient to prevent abuse. In addition, Art. 5 A (3) allows proceedings for the forfeiture and revocation of patents to be initiated only after two years have expired since the grant of the first compulsory license. The sufficiency of compulsory licenses to address the abuses in question needs to be reviewed after the grant of initial, or even consecutive, compulsory licenses. Bodenhausen, Guide to the Appliction of the Paris Convention, 70.

  12. 12.

    Ladas, Patents, Trademarks, and Related Rights, I, 530.

  13. 13.

    Reichman, Non-Voluntary Licensing of Patented Inventions, 11.

  14. 14.

    Unless stated otherwise, the Stockholm Act is also the version of the Paris Convention that is analysed in this thesis.

  15. 15.

    Bodenhausen, Guide to the Appliction of the Paris Convention, 11-14.

  16. 16.

    The number of signatories to this convention has since grown from the initial 11 to 176 in 2015. Ibid.; World Intellectual Property Organization., WIPO Intellectual Property Handbook, 241; World Intellectual Property Organization, “Treaties Statistics : Paris Convention for the Protection of Industrial Property,” WIPO, last modified n.d., accessed 15 January 2015 http://www.wipo.int/treaties/en/StatsResults.jsp?treaty_id=2&lang=en.

  17. 17.

    The members party to the Paris Convention are not allowed to enter into special agreements on industrial property rights that contravene its provisions (Art. 19 PC). By incorporating Art. 19 PC into TRIPS, the status of TRIPS as a “Paris-plus” agreement was strengthened. Gervais, TRIPS Agreement, 2.45. Yusuf is of a view that due to the incorporation of PC via Art. 2 (2), mutual obligations of contracting parties to PC are sustained pursuant to Art. 30 (4) of the Vienna Convention on the Law of Treaties, open for signatures 23 May 1969, 1155 U.N.T.S. 331 (entry into force 27 January 1980), [hereinafter VCLT]. When countries are signatories to both treaties, Art. 2 (2) represents this intent. When only one of them is a signatory to TRIPS, then PC is applied. Abdulqawi A. Yusuf, “TRIPS : Background, Principles and General Provisions,” in Intellectual Property and International Trade: The TRIPS Agreement, ed. Carlos M. Correa and Abdulqawi A. Yusuf (Alphen aan den Rijn: Kluwer Law International, 2008), 20-21.

  18. 18.

    Gervais, TRIPS Agreement, 2.45.

  19. 19.

    UNCTAD-ICTSD, Resource Book on TRIPS and Development, 463. An initiative to include a rule on remuneration was refused by US at the Conference of Lisbon, as it would have contradicted national court practices to grant royalty-free licenses as antitrust remedies. Ladas, Patents, Trademarks, and Related Rights, I, 535; Reichman, Non-Voluntary Licensing of Patented Inventions, 12, fn 37.

  20. 20.

    Oliver Brand, “Article 2,” in WTO: Trade-Related Aspects of Intellectual Property Rights, ed. Peter-Tobias Stoll, Jan Busche, and Katrin Arend (Leiden: Martinus Nijhoff Publishers, 2009), 139-140; UNCTAD-ICTSD, Resource Book on TRIPS and Development, 463. Cf. Joseph Straus, “Implications of the TRIPS Agreement in the Field of Patent Law,” in From GATT to TRIPS - the Agreement on Trade-Related Spects on Intellectual Property Rights, ed. Friedrich-Karl Beier and Gerhard Schicker (Munich: VCH, 1996), 204-205.

  21. 21.

    Bodenhausen, Guide to the Appliction of the Paris Convention, 70. By the year 1990, the majority of European countries had established compulsory licenses for dependent patents. Hans Peter Walter, “Compulsory Licenses in Respect of Dependent Patents under the Law of Switzerland and Other European States,” IIC - International Review of Intellectual Property and Competition Law 21 (1990): 535-536.

  22. 22.

    Reichman, Non-Voluntary Licensing of Patented Inventions, 11-12.

  23. 23.

    UNCTAD-ICTSD, Resource Book on TRIPS and Development, 463, fn 915 (with the following references).

  24. 24.

    The theme of dependent patents has occasionally arisen in the international arena; for example, Art. 5A III b) of the Resolution of AIPPI Congress of Tokyo of 1966 addressed this topic. Paul Mathély (ed.) AIPPI Annuaire 1966/I Congrès De Tokio - Rapport De Synthèse (Zurich: International Association for the Protection of Intellectual Property, 1966), 52-57 on the topic of “Reasons for Which the Rights of the Patentee Can Be Restricted”. With respect to the procedural aspects, the Resolution already included elements that would later become part of Art. 31 TRIPS.

  25. 25.

    Yusuf, “TRIPS,” 5; UNCTAD-ICTSD, Resource Book on TRIPS and Development, 463.

  26. 26.

    Reichman, Non-Voluntary Licensing of Patented Inventions, 10-11; Jerome H. Reichman, “Intellectual Property in International Trade : Opportunities and Risks of a GATT Connection,” Vanderbilt Journal of Transnational Law 22 (1989): 816-818, fn 315 (with references).

  27. 27.

    Yusuf, “TRIPS,” 6-7, 9.

  28. 28.

    Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 3. Due to Art. 2.1 TRIPS, the members of the TRIPS agreement are obliged to comply with Art. 5 (A) PC in respect to Art. 31 TRIPS. Because Art. 5 A PC is integrated into the TRIPS system, its implementation by the signatories of the TRIPS Agreement can become subject to the WTO dispute settlement proceedings. Gervais, TRIPS Agreement, 2.45.

  29. 29.

    Frankel and Lai, “Recognized and Appropriate Grounds for Compulsory Licenses,” 157.

  30. 30.

    Art. 31 TRIPS emphasizes case-specific evaluation, the conditions for compulsory licenses by competent authorities (Art. 31 (a)-(h) TRIPS), and the availability of judicial review for the decisions made (Art. 31 (g),( i)-(j) TRIPS). An important change from the PC is the requirement of adequate remuneration (Art. 31 (h) TRIPS). Moreover, Art. 31 (b) TRIPS establishes that compulsory licenses cannot be granted sans prior unsuccessful efforts to obtain a license from a right holder. Closely following the language of the last sentence of Art. 5 A (4), TRIPS extends the limitations on the scope of the compulsory license to all compulsory licenses, expands them, and regulates their duration (Art. 31 (c)-(f) TRIPS).

  31. 31.

    Eikermann, “Article 31,” 559, fns 25-26 with references to MTN.GNG/NG11/w/12/Add. 1, 21 October 1987 and MTN.GNG/NG11/5, 14 December 1987, para 9.

  32. 32.

    Gervais, TRIPS Agreement, 2.409.

  33. 33.

    See compulsory licenses that are granted as remedies to anti-competitive practices (Art. 31 (k) TRIPS) and those granted on the basis of public non-commercial use and national emergency or other circumstances of extreme urgency (Art. 31 (b) TRIPS).

  34. 34.

    Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 4.

  35. 35.

    WTO, “WTO IP Rules Amended to Ease Poor Countries’ Access to Affordable Medicines,” WTO, last modified 23 January 2017, accessed 26 November 2017 https://www.wto.org/english/news_e/news17_e/trip_23jan17_e.htm. See Doha Declaration; Implementation of Paragraph 6 Doha Declaration; WTO, Amendment of the TRIPS Agreement, 8 December 2005, WT/L/641.

  36. 36.

    Correa, “Investment Protection in Bilateral and Free Trade Agreements,” 331, 335. The trend of including IP clauses in bilateral trade agreements was already initiated by the USA during the 1980s, prior to the conclusion of the TRIPS Agreement, and was later accelerated by other developed countries when further possibilities to agree on IPRs in the context of the WTO reached an impasse. Ibid, 332-333.

  37. 37.

    For further discussions of free trade agreements and IP, see, for example, Christopher Heath and Anselm Kamperman Sanders, Intellectual Property and Free Trade Agreements (Oxford: Hart Publishing, 2007); Reto M Hilty and Thomas Jaeger, “Legal Effects and Policy Considerations for Free Trade Agreements: What Is Wrong with FTAs,” in Intellectual Property and Free Trade Agreements in the Asia-Pacific Region, ed. Christoph Antons and Reto M Hilty (55-84. Berlin: Springer, 2010); Henning Grosse Ruse-Khan, “The International Law Relation between TRIPS and Subsequent TRIPS-Plus Free Trade Agreements: Towards Safegoarding TRIPS Flexibilities,” Journal of Intellectual Property Law 18, no. 2 (2011); Josef Drexl, Henning Grosse Ruse-Khan, and Souheir Nadde-Phlix, EU Bilateral Trade Agreements and Intellectual Property: For Better or Worse? (Heidelberg: Springer, 2014).

  38. 38.

    See Art. 12 of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of Biotechnological Inventions, 1998 O.J. (L 213) 13 [hereinafter Biotechnology Directive]; Regulation 816/2006.

  39. 39.

    See Sects. 7.5, 8.2.

  40. 40.

    Case C-235/89, Commission v. Italian Republic, 1992 E.C.R. I-777, para 29; Case C-30/90, Commission v. United Kingdom of Great Britain and Northern Ireland, 1992 E.C.R. I-829, para 33. For more detail, see Sect. 6.4.3.2.

  41. 41.

    Art. 3 Regulation 1257/2012.

  42. 42.

    Art. 7, rec. 14 Regulation 1257/2012.

  43. 43.

    Rec. 10 Regulation 1257/2012.

  44. 44.

    See Arts. 46-48 Convention for the European Patent for the Common Market (Community Patent Convention) O.J. 1976 ( L 17) 1; Arts. 45-47, Agreement Relating to Community Patents, 1989 O.J. (L 401) 1; Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 19; Proposal for a Council Regulation on the Community Patent, 2000 O.J. (C 337E) 278; Rec. 6, Arts. 21-22 Council of the European Union, Working Document - Proposal for a Council Regulation on the Community Patent. Presidency Compromise Proposal Concerning Recital 6 and Articles 9a, 20, 21, 22, 24a to 24d, 44 and 53a, 14130/03 PI 111 (30 October 2003).

  45. 45.

    Reto M. Hilty et al., Unitary Patent Package : Twelve Reasons for Concern, Research Paper No. 12-12 (Munich: Max Planck Institute for Intellectual Property & Competition Law), 3-4, 5-6, 11.

  46. 46.

    See Rec. 6, Art. 21 and 22 of Proposal for a Council Regulation on the Community Patent, which would have allowed the EC to grant compulsory licenses on the basis of failure to work (Art. 21 para 1) and public interest (Art 21 para 3) and to dependent patents and plant variety rights (Art. 21 para 2), as well as for semiconductor technology (Art. 21 para 4). The later revisions suggested that this power would have been granted to the Community Patent Court. See Rec. 6, Arts. 21 and 22 of the Council of the European Union’s, Proposal for a Council Regulation on the Community Patent and Rec 6, Arts. 21 and 22 of the Council of the European Union’s, Revised Working Document, Proposal for a Council Regulation on the Community Patent, Revised Presidency Compromise Proposal Concerning Recital 6 and Articles 2, 9a, 20, 21, 22, 24a to 24d, 44 and 53a, 14130/1/03 REV 1 PI 111 (6 November 2003). The subsequent revision also envisioned the grant of compulsory licenses to remedy practices that were found to be anticompetitive on the basis of national merger regulation. See Art. 21 para 3 of the Council of European Union’s, Second Revised Working Document, Proposal for a Council Regulation on the Community Patent, Second Revised Presidency Compromise Proposal Concerning Recital 6 and Articles 2, 9a, 20, 21, 22, 24a to 24d, 44 and 53a, 14130/2/03 REV 2 PI 111, (13 November 2003). See also Straus and Prinz zu Waldeck und Pyrmont, “Survey of Compulsory Licensing Legislation,” 30, 128-129.

  47. 47.

    See, for example, Laurence R. Helfer, “Human Rights and Intellectual Property : Conflict or Coexistence?,” Minnesota Intellectual Property Review 5, no. 1 (2003); “Toward a Human Rights Framework for Intellectual Property,” U.C. Davis Law Review 40 (2007); Peter K. Yu, “Reconceptualizing Intellectual Property Interests in a Human Rights Framework,” U.C. Davis Law Review 40 (2007); Xavier Seuba, “Human Rights and Intellectual Property Rights,” in Intellectual Property and International Trade: The TRIPS Agreement, ed. Carlos M. Correa and Abdulqawi A. Yusuf (Alphen aan den Rijn: Kluwer Law International, 2008); “Human Rights and Intellectual Property Rights,” in Intellectual Property and International Trade: The TRIPS Agreement, ed. Carlos M. Correa and Abdulqawi A. Yusuf (Alphen aan den Rijn: Kluwer Law International, 2016); Klaus Beiter, “Establishing Conformity between TRIPS and Human Rights : Hierachy in International Law, Human Rights Obligations of the WTO and Extraterritorial State Obligations under the International Covenant on Economic, Social and Cultural Rights,” in TRIPS Plus 20: From Trade Rules to Market Principles, ed. Hanns Ullrich, et al. (Heidelberg: Springer Verlag, 2016).

  48. 48.

    For example, TRIPS has been noted as conflicting with “the realization of economic, social and cultural rights in relation to, inter alia, impediments to the transfer of technology to developing countries, the consequences for the enjoyment of the right to food of plant variety rights and the patenting of genetically modified organisms, ‘bio-piracy’ and the reduction of communities’ (especially indigenous communities’) control over their own genetic and natural resources and cultural values” and “the right of everyone to enjoy the benefits of scientific progress and its applications, the right to health, the right to food and the right to self-determination” Office of the High Commissioner of Human Rights, Sub-Commission on the Promotion and Protection of Human Rights, Intellectual Property and Human Rights. Resolution 2000/7, Un. Doc. E/CN.4/SUB.2/RES/2000/7, (2000), 1.

  49. 49.

    For an overview of the literature on the overlaps of different human rights and IPRs, see Seuba, “Human Rights and Intellectual Property Rights,” 474-476 (with references).

  50. 50.

    On access to essential technologies from the perspective of human rights, see generally Abbe E. L. Brown, Intellectual Property, Human Rights and Competition (Cheltenham: Edward Elgar Publishing, 2012).

  51. 51.

    United Nations General Assembly, Resolution, International Bill of Human Rights, A Universal Declaration of Human Rights, UN. Doc. A/RES/217(III) (10 December 1948) [hereinafter UDHR].

  52. 52.

    International Covenant on Economic, Social and Cultural Rights, opened for signature 16 December 1966, 993 U.N.T.S. 3 (entered into force 3 January 1976) [hereinafter ICESC]. In addition, Art. 13 of the CFR recognizes the freedom of the arts and sciences.

  53. 53.

    UN Committee on Economic, Social and Cultural Rights (CESCR), General Comment No. 17 : The Right of Everyone to Benefit from the Protection of the Moral and Material Interests Resulting from Any Scientific, Literary or Artistic Production of Which He or She Is the Author (Art. 15, Para. 1 (C) of the Covenant), Un. Doc. E/C.12/GC/17 (12 January 2006), 2-3. Art. 15 (c) ICESC “safeguards the personal link between authors and their creations and between peoples, communities or other groups and their collective cultural heritage, as well as their basic material interests which are necessary to enable authors to enjoy an adequate standard of living.” Ibid, 2. For further analysis of the interrelationship between Art. 15 ICESC and IPRs, see generally Yu, “Reconceptualizing Intellectual Property Interests.”; Beiter, “Establishing Conformity between TRIPS and Human Rights,” 458-460.

  54. 54.

    Protocol to the Convention for the Protection of Human Rights and Fundamental Freedoms, opened for signature 20 March 1952, E.T.S. 9 (entered into force 18 May 1954). [hereinafter Protocol 1 ECHR]; Anheuser-Busch Inc. v. Portugal [GC], no. 73049/01 (11 January 2007), ECLI:CE:ECHR:2007:0111JUD007304901, para 72. Right to property is recognized in Art. 17 UDHR, but it was not included as a human right in the ICESC and International Covenant on Civil and Political Rights (opened for signature 16 December 1966) 999 U.N.T.S. 171 (entered into force 23 March 1976) [hereinafter ICCPR].

  55. 55.

    § 14 Grundgesetz [GG] [Basic Law], translation at https://www.gesetze-im-internet.de/englisch_gg/ (Ger.); School Book, BVerfG, 7 June 1971, IIC 1972, 394.

  56. 56.

    Consolidated version of the Treaty on the European Union, 2012 O.J. (C 326) 13, [hereinafter TEU]; Christophe Geiger, “Intellectual ‘Property’ after the Treaty of Lisbon : Towards a Different Approach in the New European Legal Order?,” European Intellectual Property Review 32, no. 6 (2010): 257.

  57. 57.

    Hilty, “Economic, Legal and Social Impacts of Counterfeiting,” 14. The argument underlying the incentive theory has also been attributed to Thomas Jefferson; see Jefferson, “To Isaac McPherson Monticello”; Dominique and van Pottelsberghe de la Potterie, Economics of the European Patent System, 48-49.

  58. 58.

    See Sect. 2.1.2 on the incentive theories, cf. Sect. 2.1.3 on the prospect theory.

  59. 59.

    See Christophe Geiger, “Intellectual Property Shall Be Protected!? Article 17(2) of the Charter of Fundamental Rights of the European Union : A Mysterious Provision with an Unclear Scope,” European Intellectual Property Review 31, no. 3 (2009): 115; Geiger, “Intellectual “Property” after the Treaty of Lisbon,” 257; Jonathan Griffiths and Luke McDonagh, “Fundamental Rights and European IP Law : The Case of Art 17 (2) of the EU Charter,” in Constructing European Intellectual Property, ed. Christophe Geiger (Cheltenham: Edward Elgar Publishing, 2013), 80.

  60. 60.

    Explanations Relating to the Charter of Fundamental Rights, 2007 O.J. (C 303) 17, explanation on Article 17; Geiger, “Intellectual Property Shall Be Protected!?,” 116; Tuomas Mylly, “Constitutionalization of the European Legal Order : Impact of Human Rights on Intellectual Property in the EU,” in Research Handbook on Human Rights and Intellectual Property, ed. Christophe Geiger (Cheltenham: Edward Elgar Publishing, 2015), 106.

  61. 61.

    Mylly, “Constitutionalization of the European Legal Order:,” 105-106.

  62. 62.

    Art. 1 Protocol 1 ECHR.

  63. 63.

    Arts. 17 (2) and Art. 52 (1) CFR.

  64. 64.

    See § 14 GG.

  65. 65.

    See Art. 52 (1) CFR.

  66. 66.

    See Case C-170/13, Huawei, 5 C.M.L.R. 14 (2015), para 42.

  67. 67.

    Gustavo Ghidini and Andrea Stazi, “Freedom to Conduct Business, Competition and Intellectual Property,” in Research Handbook on Human Rights and Intellectual Property, ed. Christophe Geiger (Cheltenham: Edward Elgar Publishing, 2015), 410.

  68. 68.

    Ibid, 416-420.

  69. 69.

    Case C-283/11, Sky Österreich GmbH v. Österreichischer Rundfunk, 2 C.M.L.R. 25 (2013), paras 41-43 (2013), with the further references to CJEU case law. For criticism of this expansive interpretation, see Mylly, “Constitutionalization of the European Legal Order,” 129.

  70. 70.

    Mylly, “Constitutionalization of the European Legal Order:,” 129.

  71. 71.

    See Case C-170/13, Huawei, 5 C.M.L.R. 14 (2015), para 42; for further discussion see Sect. 9.4.3.2.

  72. 72.

    Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990), ECLI:CE:ECHR:1990:1004DEC001263387; Anheuser-Busch Inc. v. Portugal [GC], no. 73049/01 (11 January 2007), para 72.

  73. 73.

    Anheuser-Busch Inc. v. Portugal [GC], no. 73049/01 (11 January 2007), para 78. See also Laurence R. Helfer, “New Innovation Frontier? Intellectual Property and the European Court of Human Rights,” in Intellectual Property and Human Rights, ed. Paul L. C. Torremans (Alphen aan den Rijn: Wolters Kluwer Law & Business, 2015), 47-55.

  74. 74.

    Monica Carss-Frisk, Right to Property. A Guide to the Intepretation of Article 1 of Protocol No. 1 to the European Convention on Human Rights, Human Rights Handbooks, No. 4 (Strasbourg: Directorate General of Human Rights, 2003), 13, 17.

  75. 75.

    Kopecký v. Slovakia, no. 44912/98 (28 September 2004), ECLI:CE:ECHR:2004:0928JUD004491298, para 35.

  76. 76.

    “[T]he hope of recognition of a property right which it has been impossible to exercise effectively cannot be considered a “possession” within the meaning of Article 1 of Protocol No. 1, nor can a conditional claim which lapses as a result of the non-fulfilment of the condition” ibid.

  77. 77.

    Marckx v. Belgium, no. 6833/742 (13 June 1979), ECLI:CE:ECHR:1979:0613JUD000683374, para 50; Aida Grgić, Zvonimir Mataga, Matija Longar and Ana Vilfan, Right to Property under the European Convention on Human Rights: A Guide to the Implementation of the European Convention on Human Rights and its Protocols, Human Rights Handbooks, No. 10 (Strasbourg: Council of Europe, 2007), 7. “Future income […] is only a “possession” once it has been earned, or an enforceable claim to it exists”. Malik v. The United Kingdom, no. 23780/08, (13 March 2012) ECLI:CE:ECHR:2012:0313JUD002378008, para 93.

  78. 78.

    In principle, UOCI, when relying on existing, protected technology, could be protected under the right to share in scientific advancement and its benefits (Art. 27 (1) UDHR), the right to enjoy the benefits of scientific progress and its applications (Art. 15 (b) ICESC), and the freedom of the sciences (Art. 13 CFR). These provisions could be considered to justify, for example, research exemptions or other exceptions in favour of UOCI. However, no equivalent provision has been incorporated into the ECHR. Therefore, on the level of human rights, the interest of such follow-on innovators would need to be accommodated in the ECHR system on the basis of public and general interest that justifies interferences with the right to property under Art. 1 Protocol 1 ECHR.

  79. 79.

    Helfer, “New Innovation Frontier?,” 41, fn 63.

  80. 80.

    See Kopecký v. Slovakia, no. 44912/98 (28 September 2004), para 35.

  81. 81.

    Ghidini and Stazi, “Freedom To,” 420.

  82. 82.

    Ibid, 416-420.

  83. 83.

    See Sects. 8.8.1.5 and 9.4.3.2, discussing the implications of the Huawei decision.

  84. 84.

    Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990).

  85. 85.

    Similarly Art. 17.1 CFR.

  86. 86.

    James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), ECLI:CE:ECHR:1986:0221JUD000879379, para 45.

  87. 87.

    Anheuser-Busch Inc. v. Portugal [GC], no. 73049/01 (11 January 2007), para 45.

  88. 88.

    James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 50.

  89. 89.

    Kirilova and Others v. Bulgaria, nos. 44912/98, 44038/98, 44816/98 others (9 June 2005), ECLI:CE:ECHR:2005:0609JUD004290898, para 106. See also Sporrong and Lönnroth v. Sweden, nos. 7151/75, 7152/75 (23 September 1982) ECLI:CE:ECHR:1982:0923JUD000715175, para 69; James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 54.

  90. 90.

    Sporrong and Lönnroth v. Sweden, nos. 7151/75, 7152/75 (23 September 1982), para 70; James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 50.

  91. 91.

    “[A] taking of property effected in pursuance of legitimate social, economic or other policies may be ‘in the public interest’, even if the community at large has no direct use or enjoyment of the property taken.” James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 45.

  92. 92.

    Edwards v. Malta, no.17647/04, (24 October 2006), ECLI:CE:ECHR:2006:1024JUD001764704, para 60.

  93. 93.

    SIA AKKA/LAA v. Latvia, no. 562/05 (12 July 2016), ECLI:CE:ECHR:2016:0712JUD000056205, para 65.

  94. 94.

    See Kaplow, “Rules Versus Standards,” 560-563.

  95. 95.

    Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990).

  96. 96.

    Helfer, “New Innovation Frontier?,” 65-71.

  97. 97.

    Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990).

  98. 98.

    Ibid.

  99. 99.

    James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 54.

  100. 100.

    Lithgow and Others v. The United Kingdom, nos. 9006/80, 9262/81, 9263/81, 9265/81, 9266/81, 9313/81, 9405/818, (8 July 1986), ECLI:CE:ECHR:1986:0708JUD000900680, para 122.

  101. 101.

    Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990).

  102. 102.

    “[T]he taking of property without payment of an amount reasonably related to its value would normally constitute a disproportionate interference which could not be considered justifiable under Article 1 (P1-1). Article 1 (P1-1) does not, however, guarantee a right to full compensation in all circumstances. Legitimate objectives of “public interest”, such as pursued in measures of economic reform or measures designed to achieve greater social justice, may call for less than reimbursement of the full market value.” James and Others v. The United Kingdom, no. 8793/79 (21 February 1986), para 54.

  103. 103.

    Anheuser-Busch Inc. v. Portugal [GC], no. 73049/01 (11 January 2007), para 83; Helfer, “New Innovation Frontier?,” 61, 84.

  104. 104.

    Helfer, “New Innovation Frontier?,” 73-74 and fn 219. See eBay, 126 S. Ct. 1837, 1839, 1842.

  105. 105.

    However, it has been questioned how wide the margin of appreciation is with respect to other limitations to IPRs, such as exceptions, on the grounds of public interest. Helfer, “New Innovation Frontier?,” 63-64. In Smith Kline, the applicants also complained that the Special Division of the Patent Office that granted the compulsory license was not an independent tribunal in the meaning of Art. 6.1 ECHR and that the decision was not subject to review by any judicial organ pursuant to Art. 13 ECHR. Smith Kline and French Laboratories Ltd v. The Netherlands (dec.), no. 12633/87, (4 October 1990). The fact that the Netherlands was amending the Patent Act to correspond with the conditions of TRIPS contributed to the settlement of the case. Helfer “New Innovation Frontier?,” 64. Given that TRIPS also introduced rigorous procedural criteria for the grant of compulsory licenses, it is likely that compulsory licenses granted in accordance with Art. 31 TRIPS would not intervene with Art. 6 and Art. 13 ECHR. Cf. Helfer “New Innovation Frontier?,” 64, in which the author argues that vesting the power to grant compulsory licenses to an administrative organ may breach Art. 6 ECHR.

  106. 106.

    See Sects. 8.8.1.5 and 9.4.3.2.

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    Alina Wernick

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Wernick, A. (2021). Legal Foundations and Sources of Compulsory Liability Rules. In: Mechanisms to Enable Follow-On Innovation. Munich Studies on Innovation and Competition, vol 15. Springer, Cham. https://doi.org/10.1007/978-3-030-72257-9_5

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