Scope of the Subject
Aim and Hypothesis
Introduction- Intellectual Property
Impact of IP
Rights conferred to IP Holder
Abuse of Monopoly
Introduction to Compulsory Licensing
Emergence of Compulsory Licensing
Compulsory Licensing in copyright
Essential Facilities Doctrine
Analysis on the differences in the criteria considered for invoking compulsory licence under different forms of IP and with emphasis on Patent and Copyright Law.
Scope of the Project
We all know that the compulsory licensing exist in Intellectual property , however the concept of compulsory licensing is mostly restricted to only two subject matters of Intellectual Property law i.e Patents and Copyright.
In recent times we see the expansion of the concept of Compulsory licensing to other subject matters of the Intellectual Property law such as plant varieties protection.
But the criteria and the necessity for the invocation laid down under each subject matter differs. The national legislations like Copyright, Designs and Patents Act 1988 failed to provide certain specific criteria when the compulsory licensing can be invoked dealing with the subject matter of copyright whereas the scenario is same even in the regional arena however the judiciary has itself formulated a criteria for invocation while dealing with certain cases like RTE and ITP v Commissionpopularly known as Magill case.
That is unlike in the scenario of patents, as the concept of compulsory licensing can only be invoked in existence of certain scenarios which has been clearly laid down in the national legislations like Patents Act 1977 as well as the international conventions and agreement also has provisions giving leverage to nations to take their own decisions in invocation of compulsory licensing realising the need and importance for the same. One criterion which had gained extensive attention and rationalization leading to invocation of ‘compulsory license’ is public health grounds or to deal with national emergencies.
However, the criteria and the grounds for invoking can be clubbed together into a common casket which has a single objective to balance the ‘abuse’ and ‘misuse’ of the Intellectual Property. The concept analysed and the scope of the project is restricted mainly to U.K and Europe and international treaties.
Aim and Hypothesis the project
Aim of the project is to analyse on the distinguishable features in the criteria used for invoking compulsory licensing in Patents and Copyright and the rationale behind existence of differences in the criteria between both the subject matters and whether the differences which arise aims to fulfil the same objective.
Research will answer the following questions:
1. Finding differences in the criteria measured for invocation of compulsory licensing in Patents and Copyright and other IP?
2. What is the rationale behind existence of differences in the criteria for invocation?
3. Whether the criteria laid down in which compulsory licensing can be invoked is an exhaustive list?
4. Tracing the origin of the concept of compulsory licensing in Patents and Copyright and which has the first trace of the concept?
5. Clubbing the criteria to find the common objective?
Dissertation will include seven chapters:
Chapter I: Introduction of Intellectual Property and Abuse and misuse of IP and Compulsory licensing.
Chapter II: Introduction and evolution of the concept of compulsory licensing in Copyright.
Chapter III: Introduction and evolution of the concept of compulsory licensing in Patents.
Chapter IV: Compulsory Licensing in other forms of IP.
Chapter V: Grounds for invocation of compulsory licenses in Intellectual Property Law.
Chapter VI: Conclusion and Suggestions
Research will be conducted using secondary sources based on literature survey in the subject matter. Large amount of literature on the subject is found at Bangor University Library and online databases. Further sources would include commentaries and reports published by on the official websites of the international organisations. Primary and Secondary sources will also be utilised in order to collect content regarding the subject matter at national and regional levels. These sources would help me synthesise the information and critically analyse the information in order to achieve the aim of the dissertation.
Intellectual Property rights are the exclusive rights to the holders in free markets. For an epoch although there is existence of the intellectual property rights in most countries they had only residual meanings in their economies. These rights were mostly used in terms of a tool to gain foreign trade and these rights have later on been developed and given a status as relevant to that of a physical property and labelled them as “intellectual property rights”.
In Philips v Mulcaireit has been reiterated that there is no exact value to the term ‘intellectual property’.
In common parlance as the term suggests these rights are granted to the products and creations created by the human intellect which has a notion of novel existence. Intellectual Property has gained rapid momentum in this era due to increasing dependence on the human creations. Trade in terms of technology intensive creations and other forms had also grown rampantly. So, the need for the protection is also equally felt.
Some creations have also been a necessity for the survival of certain industries and economies, so there is a need of higher degree protection for such creations. For example, In 1980s pharmaceutical, chemical and petroleum industries were in the process of recognising if the patent system was important for the protection of their innovation. Today no invention created spending lot of money and time would be left unprotected.
Due to a borderless globalisation and increasing dependence on the innovations and creations there is a wider market for the intellectual creations and this led to international recognition and protection .
In this chapter we shall examine:
- Briefly as to what is Intellectual Property?
- What are the different forms of Intellectual Property?
- Impact of the Intellectual Property.
- Rights Conferred.
- Abuse of Monopoly.
- Compulsory Licensing
Intellectual Property Rights
Intellectual Property Rights comprises of non exhaustive forms of protection granted to different creations. Each right is developed in a manner to protect different forms of Intellectual Property.
However, widely recognised forms of Intellectual Property are Patents, Copyright, Designs and Trademarks.All these four forms of Intellectual Property are protected by statute in United Kingdom. Let us look into these terms in the perspective as to how these rights are protected by the statute and how the statute defines them.
Patent law protects novel inventions which is either a product or a process and has industrial application. Patent offices in different countries grant patents in those countries. Patent office in Newport Gwent termed as ‘Intellectual Property Office’ is the authority in granting the patents in United Kingdom to inventions those which meet the criteria set down by the law. Once the holder gets the Patent to his invention he gets the exclusivity to the invention. However, exclusivity and the monopoly are not without its exceptions.
Legality of the Patent in Europe is still derived from the national legislations. International instruments which act as the basic structure to the patent law are the Paris Convention  which tries to harmonise and standardise the basic law and system surrounding the Patents and TRIPS Agreement which acts as a multilateral instrument in this regard.
Copyrights are those rights which come into existence even prior to registration like other forms of intellectual property rights. There are rights which are attributed directly to the creators on their creations further copyright acts as a protection to those rights. These rights are divided into moral and economic rights. Creation include artistic, literary dramatic, music and other ancillary rights.
In comparison to the other forms of intellectual property the duration of copyright protection is more. Copyright protection has been expanded to other forms of Intellectual Property such as computer software and databases.
Trademarks help both the consumer in terms of identifying the products and manufacturer in terms of creating brand value distinct from others in the market. In U.K Trade Marks Act 1994 provides for trademarks registry to look into registration of trademarks.
In the case of Arsenal Fc v Reed ECJ has reiterated that the “trademarks acts as an essential instrument in the system of competition and it is these signs along with the product value which attract customers and retain them to be loyal to the product because of the distinctive identity it provides to the products.”
Same as that of Patents international instruments which regulate Trademarks is Paris Convention and TRIPS along with Madrid Protocol which exclusively addresses the issues related to the Trademarks.
Designs are the outward appearance of the product which helps in identification of the product easily. Designs both registered and unregistered are protected by the statute. These rights do overlap with rights conferred to other forms of Intellectual Property such as Copyright. Copyright, Designs and Patents Act 1988 defines design as ‘the shape or configuration of the design whether internal or external of the whole or part of the article’.
In the case of R v Registered Designs Appeal Tribunal  defined article for the registered designs as ‘any article which is made or sold separately’.
Unlike other forms of Intellectual Property the least recognised is the Designs in International arena and there is no international treaty specifically stipulating on designs.
Over the past few years growing need and the rising impact of the intellectual property led to expansion and inclusion of other forms into the non exhaustive list of IP .
Computer Circuit Boards:
In order to comply with the EU Directive the United Kingdom has expanded its protection under Designs act to ancillary rights such as topography. As the layout of computer circuit boards is an invention which is novel and needs protection from fabrication and falsification, U.S has pressurised other countries to include such protection under their national laws. Duration of protection usually lasts for 10 years.
Plant Varieties Act
In accordance with the International union for the Protection of the New Varieties of the Plants Convention,United Kingdom also has adopted Plant Varieties Act 1997 for the protection of the new varieties of the plants and seeds.
Those Databases which are not protected under the Copyright act are protected under the Database Directive 1997.
There are several scenarios while tracing the history of intellectual property which will give the insight into how the concept of intellectual property is evolved and how the impact of the IP has changed over time.
Although not completely absent intellectual property rights can be traced back to the issuance of the Statute of the monopolies, 1624. It has been inspired with the idea of the incentives to the inventor.
As highlighted briefly earlier IP has been used largely to fulfil the economic interests of the country. But the growing needs changing demand had created a larger impact of the Intellectual Property in the modern era.
Let us now understand the trends in the growth of intellectual property protection.
Impact of IP
On the total applications filed under the Patents Cooperation Treaty for the year 2016 United States has overall filed 24.3% of the applications followed by Japan and China. And the rise of the demand for filing patents and trademarks under the international systems of the PCT and Madrid systems has grown more than 7% from 2015 to 2016 , however surprisingly the rise in the filing applications under the WIPO’s Hague system for industrial designs has grown two fold than the other forms of I.P i.e is around 14 %.
This clearly shows the international impact of the I.P and the rising demand for the protection of inventions and creations in the international platform rather than mere protection under the national ambit. IP is largely felt essential by the economies to improve and increase the trade as well as for the growth of the economy. Recent examples in this regard are the promotions of products through “Make in India” policy.
In 2016 the most PCT applications are filed by the United States followed by Japan and China , however there are other countries such as India although not being a developed country is in the list of top 15 countries who filed applications.
Overall Asia contributed 47% of the Applications due to the extraordinary growth in China and India. ZTE Corporation followed by the Huawei Technologies filed highest PCT applications and in terms of Universities University of California was the highest. Among the total published applications 8.5% was for Digital Communications and 8.2% for the computer technology.
Like Patents in Trademarks as well the largest number of trademark applications under the Madrid System for international registration was filed by United States followed by Germany, France, China and Switzerland.
Most applications is filled by the L’Oreal of France followed by the Glaxo Group of U.K and Germany’s BMW and Lidl.
Out of the total international applications Computers and electronics was the most followed by services for business and technological services.
This clearly and evidently shows the growth in the use of the Intellectual Property worldwide.
As we have understood the impact of IP let us further understand in brief as to what I.P confers to the I.P Holder.
Rights Conferred to the IP Holders
Exploitation of Invention -Patents
Invention once patented in the name of I.P holder, such holder has exclusive rights over such invention. These rights include commercial exploitation of the invention either through sale or through licensing the invention for a price.
Patent infringement is generally protected by the statute however; there are certain exceptions to the infringement and monopoly granted to the patent holder.
Economic and Moral Rights -Copyright
Generally guarantees two sets of right to the copyright holder to his creations; one is moral rights and other is economic rights.
Economic rights include rights such as copying, adaptation, performance, lending, publication, dramatisation rights of the work which is done either through sale or licensing of the work .
These rights are inalienable rights which grants the creator paternity and integrity rights to his creation inspite of the work being sold or licensed to the third party.
In Walmsley v Education Ltd W has claimed his moral rights to the two photographs which has been used in the book as an illustration.
Assignment and Transmission- Designs
Registered Designs can be transferred by way of assignment , transmission on death or by operation of law. It also protects in case of infringement. ‘Design can be infringed by use of anything where the overall impression is not different.’
Proprietary rights- Trademarks
Trademarks are given the status of personal property and are considered to be as personal property rights under English law. These proprietary rights also confer rights to assign and license the mark.
As we have understood in brief the basic rights conferred to the IP holders .We can come to the conclusion that the protection gives holder exclusivity and monopoly to their works.
Abuse of Monopoly
However, this monopoly in the current day scenario is being exploited in a manner to gain competitive edge in the market in an anti competitive manner for some forms of I.P like copyright and also utilising the rights in a manner to gain royalty or not fully satisfying the demand in terms of patents .
Whatever form of IP rights granted it always has a threat of being abused. Further, as there is no clear cut definition to what is abuse and what constitutes abuse, the courts and some nations have developed a series of doctrines and exceptions to the rights in the statute to keep the abuse in control. For example by way of essential facilities doctrine in Copyright and compulsory licensing in Patents. Although these provisions are widely recognised only in some form of IP, these are being inculcated and expanded to other forms of IP like Trademarks.
Some jurists like Professor Bohannan argue that devising mechanisms such as misuse doctrines and (a) Remedying the abuse which has no subjective scope with the use of other statutes such as antitrust laws is vague and; (b) understanding misuse as an attempt to obtain rights beyond the scope of IP is blurred; (c) that abuse of the rights conferred nevertheless plays a role of penalising the monopoly granted by the IP rights. Further, wouldn’t require vague and blurred concepts with very less backing to remedy the abuse.
However , although would agree with the Professor Bohannan on the concept of misuse doctrines being vague and no subjective scope but the mechanisms are to be put in place for the restriction of abuse . And also the perspective on the misuse doctrines used also differs based on nation to nation and some are considered to be more Prioritising IP whereas others based on the history and circumstances tend to be not so.
A “compulsory license” is a compulsory license granted by the national authority without the consent of the title-holder for a royalty irrespective of the decision of the IP holder. “Compulsory license’ is a license issued by a state authority to a government agency, a company or third party to use a patent without the patent holder’s consent”.
Emergence of Compulsory Licensing
The first known endeavour to legislate ‘compulsory licensing’ came into existence in the type of a bill before the US Senate in 1790. The bill enclosed a plan that compulsory licenses should be established when patentees had failed to provide adequate supply of the patented subject, or had charged a higher price. The next vital step in the past is Vienna Congress one of the beginning negotiation rounds that culminated in to the Paris Convention. Although no enforcing legal instrument was established by the Congress, it has been negotiated that ‘compulsory licenses’ should be adopted where the “public interest” required it. The Germany further adopted this principle in its law.1877.
In the United Kingdom, the very first authority to deal with granting of compulsory licensing had been given to Board of trade (1883). The power was then reassigned to judicial Committee of the Privy Council (1902), and then to the Court (1907) and finally to the Comptroller (1919).
The concept of the compulsory licensing quite contrary to the belief is not a new concept and has the first instrument to inculcate the concept of compulsory licensing is the Statute of Monopolies. The concept became popular in the eighteenth century throughout the world. One IP form in which the concept of compulsory licensing is widely recognised is the Patents.
Further, IP leading to be the essential part of the trade concerned expanded the horizons of the use of the IP. One of the first conventions for patents also recognised and adopted the concept of compulsory licensing in order to restrict the misuse of the monopoly.
World Intellectual Property Organization
WIPO being the international body to regulate and harmonise the intellectual property internationally, many changes have been made since its establishment.
Paris Convention for the Protection of Industrial Propertyand Berne Convention for the Protection of Literary and Artistic Works are the most remarkable international treaties governing the subjects of the Patents and Copyright and these have been revised by the WIPO.
Paris Convention also provides for compulsory licensing for a price as in order to restrict the abuse of the patent rights.
Berne Convention provided for compulsory licensing in case of broadcasting and related rights and recording of musical works.
Rome Convention another convention dealing with the rights of the Broadcasting, Phonograms etc also provides for compulsory licenses compatible with the convention. 
TRIPS- Trade Related Intellectual Property Rights and Services , The name itself suggest that the TRIPS governs trade related IP internationally and it in the agreement deals with all forms of IP. But mostly with industrial property and provides provisions for patent. The agreement describes the basic rights that a patent holder must enjoy. It also recognises certain exceptions to the rights conferred with a view that there is a possibility of the patent owner abusing the rights conferred on him, for example either by failing to supply the product to the market. To address such issues, the agreement says governments have authority to grant or issue “compulsory licences”, allowing a third party to produce the product or use the process patented. However, this can only be done after fulfilling certain conditions laid down in the law and also should be done while safeguarding the legitimate interests of the patent holder.
If a patent is issued for a production process, then the rights must extend to the product directly obtained from the process. Under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
An issue that has arisen recently is how to ensure patent protection for pharmaceutical products does not prevent people in poor countries from having access to medicines — while at the same time maintaining the patent system’s role in providing incentives for research and development into new medicines. Flexibilities such as compulsory licensing are written into the TRIPS Agreement, but some governments were unsure of how these would be interpreted, and how far their right to use them would be respected.
A large part of this was settled when WTO ministers issued a special declaration at the Doha Ministerial Conference in November 2001. They agreed that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health. They underscored countries’ ability to use the flexibilities that are built into the TRIPS Agreement. And they agreed to extend exemptions on pharmaceutical patent protection for least-developed countries until 2016. On one remaining question, they assigned further work to the TRIPS Council — to sort out how to provide extra flexibility, so that countries unable to produce pharmaceuticals domestically can import patented drugs made under compulsory licensing. A waiver providing this flexibility was agreed on 30 August 2003.
Under this declaration for public health and security the necessity for the ‘compulsory licensing’ has been highlighted and has declared that all the members had the right to grant compulsory licences and also been given leverage as to devising the criteria as to when it can be invoked.
As we have briefly understood in abstract the concept of the intellectual property and the compulsory licensing its emergence and the impact. Analysis and understanding of the chapter tries to provide a insight and intrigue into the concept of compulsory licensing.
We can come to the conclusion that there is a need for the right balance between the rights conferred to the IP holder and the misuse doctrines and exceptions provided in terms of the compulsory licensing.
The thin line between the use and the abuse is blurred and can only be understood by in depth analysis of how the misuse is handled in each form of IP with help of case study.
Further, in the next chapter we would be dealing with how the intricate issues of misuse of Copyright are handled by way of compulsory licensing.
Chapter 2-Copyright and Compulsory Licensing
As we know once the creator creates his masterpiece, there is only one master piece which exist in the world although it can be replicated or copied but cannot be the same as the original. This creates the sense of belongingness of the creation to the creator. Copyright tries to protect the relationship of the creator with that of his creation. This protection is not without exceptions.
However, there are circumstances where the creator had to part with his creations and license the same compulsorily to a person who has nothing to do with the creation. This is termed as compulsory licensing.
The concept of compulsory licensing is not a new topic in intellectual property literature. For most part compulsory licensing in intellectual property is born out of antitrust law. From intellectual property point of view we tend to see intellectual property and antitrust principles contrary to each other.
Further, the concept of compulsory licensing is termed as “statutory licenses” are often established to give third party right to use the copyrighted work for fee.
Copyright compulsory licensing is addressed more frequently by the courts again and again and formulated a doctrine rightly known as “essential facilities doctrine” to deal with the issues.
In the United Kingdom a compulsory license of copyright can be traced back to 1995 when the duration of copyright protection was amended from 50 years to 70 years after the author’s death. Compulsory licenses also apply, in certain circumstances, for works for which protection had already expired but which was revived by virtue of a later law.
Competition rules apply to the Intellectual Property Right , they apply as a separate system according to their own logic . Treats the exercise of the IPR’s once granted in their own tangible limits under competition law. Competition law acts as the ‘ external system’ of the regulation to the Intellectual Property Rights.
Article 101 and Article 102 of the treaty of the functioning of the Europe is used by the courts to restrict the abuse of the monopoly granted by the Intellectual Property. One having dominance is restricted from getting other firms with their competing technology. In principle ordinary use of the IP would not amount to abuse.
The same has also been reiterated in the case of Deutsche Grammophon Gesellschraft mbH v Metro SN Grossmarkete GmbH & coas just mere exclusivity to distribute the protected article doesn’t amount to abuse .
Further Berne Convention apart from certain exceptions to the use of copyrighted works also provides for compulsory licensing for the broadcasting.
Essential Facilities Doctrine
“Essential facility in common parlance means any facility which is “essential” in nature” has to be shared irrespective of it being part of the exclusive right granted to them by the intellectual property.
This doctrine has been devised by the judiciary to address the issues of abuse of monopoly granted to the IP holder and this has been extensively used in copyright in order to remedy the abuse and is in similar lines to that of compulsory licensing in Patents. This doctrine is widely backed by the antitrust laws and used in the manner or scenarios where there are anti competitive behaviour due to the monopoly granted by the I.P rights.
Growth of the doctrine in Europe can be accounted to emergence of the concept of restriction against abuse of dominance in antitrust laws.
Origin can be traced back as early as 1970’s when the competition commission has brought refusal to deal and license in the ambit of Article 102 abuse of dominance in its case.
One of the first European Country which has adopted the doctrine as part of its statue is Germany in its “section 19(4) of No.4 of German Act on the restraints” deal with essential facilities.
Other European member states like Irish national authorities and Czech competition authorities seems to have been more dynamic member in dealing with the doctrine and Austria being the member state utilising the doctrine in its “broadest scope”. 
However, competition commission decisions have introduced the doctrine to the courts and the United Kingdom national court is one of the primary courts to adopt the doctrine in its case Attherance Ltd v. British Horseracing board in which the defendant had monopoly over the pre race data but however denied to license the same to the plaintiff and court held that the defendant failed to justify the denial and that the pre race data is an “essential facility”.
Let us briefly discuss the very beginning decisions of the commission with regard to the doctrine,
In the case of Istituto Chemioterapico italiano spA and commercial solvents corporation v. EC Commission manufacturer of the raw material ‘ethambutol’ drug used to treat patients of tuberculosis, decided to vertically integrate into the market downstream. In consequence to that failed to supply to the regular customer Zoya the product and Zoya commercial sustenance depended on the product. Commission held that there is no justification and that the refusal to supply would amount to eliminate the long standing supplier Zoya from the market itself.
Commissions mainly implemented essential facilities doctrine while dealing with the four issues. 
The first case dealt under this subject is Sea Containers v Stena Sealinkcase where the Stena had monopoly over the Port of Holyhead and refused the sea containers access to the port introduce a new ferry service from Holyhead to Ireland. Commission held that the owner of “ essential facility” cannot grant competitors terms less favourable.
London European/Sabena , Sabena which holds a dominant position in the Belgium had refused London European its Computer reservation services as its due to enter the market of London – Belgium route competing with the Sabena. The same is held by the competition authorities as the abusive and refusal to supply essential facility.
c. Rail Infrastructure
In Eurotunnelin which it is held that the facility should not exclude other competitors from entering whenever there is any.
d. Intellectual Property rights
The very first case dealt by the commission is the popular Magillcase which has Broadcasters BBC, RTE and ITP which held exclusive copyrights of their Broadcasting schedule whereas on the other hand Magill produces a comprehensive listing of all the broadcasting scheduled but however he is denied their television listings. This is also the case where the court has dealt specifically as to when refusal of license amount to abuse.
Although the first three issue do not specifically deal with intellectual property brief understanding shows the difference between the use of such doctrine in parlance of common subjects to that of the intellectual property where it the rights are extensively conferred by the law to the right holder .
10. Case study on Magill cases
Radio Telefis Eireann (RTE), Independent Television publication (ITP) and British Broadcasting Corporation (BBC) each separately having copyright in their TV listings and schedules , however on the other hand Magill publishes a comprehensive guide of all the TV listings every Thursday.
RTE, ITP and BBC have separately filed a case against Magill for copyright infringement however on the other hand Magill filed before the commission claiming that the RTE, ITP and BBC are abusing the dominant position.
Let us briefly analyse these cases
RTE v Magill TV Guidebefore the Irish High Court
In this case of plaintiff filed a petition before the Irish High Court for the interlocutory injunction in infringement of copyright of the plaintiff in TV and radio program schedules and plaintiff presented before the court that the best remedy to be proper infringement is injunction and that the defendant has made a complaint against the plaintiff to the E.C Commission for infringing Article 85 and 86 of EEC Treaty.
Judgement of the Irish High court in the case is that this dispute is a ‘twofold’ and granted a injunction stating that the license agreement between plaintiff and defendant is only to publish program for Thursday or Friday and Saturday or Saturday and Sunday and not more than twelve listings of RTE TV1 and TV2 and that clearly not for the whole weeks program and that the court is not anyway adjudicating and intervening with the matter before the commission.
Magill TV Guide / RTE, ITP and BBC before the Commission
Magill filed an application before the commission stating that the RTE, ITP and BBC have infringed Article 86 (currently article 102 of TFEU) dealing with abuse of dominance is infringed by refusing to license their weekly TV listings.
In its decision commission has considered various factors such as whether the competition law is applicable to RTE, ITP and BBC and figured that it is applicable because they are all involved in the commercial activity by selling TV Guides and Advertising space and further determined whether there is dominance by analysing three factors that is
a. relevant geographical market according to the commission which is most of Ireland and Northern Ireland as this is the area which relate to the listing and where the “TV guides are distributed”.
b. relevant product market according to the commission which is the TV listings and that although “weekly listings” are provided separately by each undertaking, the consumer buys only listing of one undertaking and that the consumer seeks to gain more of the listings so “comprehensive guide” is the right choice and the comprehensive guide is only possible with the listings of all these undertakings.
c. and that there exist “dominance” irrespective of copyright since in order to sell the TV listings, the schedule has to be planned in advance and the same can only be accessed by these undertakings and no other ‘third party’ can produce reliable listings and hence other parties are dependent on these undertakings and by virtue of this they are ‘dominant in the market’.
Commission further determined if there is abuse and found that there exists abuse as RTE, ITP and BBC refused to supply the weekly TV listings to Magill and due to that Magill cannot produce a ‘ comprehensive guide” which in turn word be beneficial to the customers as they can buy one guide inspite of buying three separately incurring more money.
Further stated that the refusal to supply had also “affected trade between member states” that is Ireland and Northern Ireland.
In BBC v Commission , ITP v. Commission and RTE v Commission before the court of first instance
Decision of the commission is brought before the Court of First Instance by the parties affected by the decision seeking annulment of the decision and Article 2, however the court has dismissed the case and ordered the Applicants to pay the costs of the intervener.
RTE and ITP v Commissionbefore the Court of Justice
No comprehensive television guide is available in the territory of Ireland and Northern Ireland and all appellants published their TV listings each separately and Magill has been prevented from publishing the same through injunctions of copyright infringement by the court , Magill approached the commission invoking Article 102 of TFEU , the same has been upheld by the commission and court of First Instance and the appellants have further approached the European Court of Justice in the present case.
By the order of the president of the court joined two cases 241/91 P and 242/91 P as they both relate to the same subject matter. Both the appellants in the case supported by intellectual property owners approached the Court of Justice to annul the judgement of the Court of First Instance and the Commission.
Judgement of the ECJ:
The court had dismissed the appeals by upholding the decision of the commission and also imposed costs on the appellants and their supporter.
The court has justified its judgement based on these legal assessments that
a. there exist dominant position by de facto monopoly on the listings in the market in most of the households in Ireland and 30 to 40 percent in Northern Ireland by the appellants and that it’s not merely by ownership of copyright.
b. that there also existed abuse of the dominance as the appellants have refused to license reasonably to the Magill and also has not justified the refusal and that the Court of First Instance did not err in law in finding abuse.
c. that there has also been affect on the trade between the member states that is Ireland and Northern Ireland.
d. the plea of the appellants that the commissions decision contravened Berne convention and that the Court of First Instance had no proper regard to convention is dismissed and unfounded.
From the analysis of the case at different levels we can clearly understand that interference of the intellectual property rights owners with that of competition law does not per se exist and it comes into place only when there is dominance complimented by abuse affecting trade between member states and that hampers competition by restricting new product to emerge in the market which has demand and when the refusal amounts to essential facility not being provided. Magill cases have gained widespread popularity as it had set a bench mark in determining the intervention between Intellectual Property Rights and competition law and also criticism from Intellectual Property supporters for being pro competition policy.
The trend of the approach towards abuse and misuse of monopoly granted by the intellectual property rights has changed after the benchmark judgement of Magill which deals with the intricate issue between intellectual property rights and antitrust law. There has always been a pro antitrust policy in the Europe and the same has been reiterated again. 
In the case of IMS Health Gmbh v. NDC Health GmbH, both the parties are in the business of of pharmaceutical and health care products sales data collection, however after a work group discussion ,IMS has formulated a ‘ 1860 brick structures’ in order to classify the data , however, the IMS refused to license this structure to NDC Health and the commission through ‘injunction had found it to be abusive and requested the IMS to grant license’ and the same has been appealed by the IMS to the court where the court held that the abuse can exist only ‘when the undertaking which requested the license does not limit itself to the duplicating of goods in secondary market but should use the license to create a new product for which there is demand’. In this case commission answered the question only relying on the essential facility doctrine and granted a compulsory license to the ‘1860 brick structure.
In another important judgement of Microsoft v Commission, court upheld the decision of the authority for the compulsory access of the interface codes on the reasoning that refusal to license based on the rights conferred by Intellectual Property would lead to impede technological progress in the sector.
In the case of Tierce Ladbroke v Commission, the Ladbroke for the book he is trying to publish has requested the operator of French horse races and license owner respectively to provide the sound and pictures of course horse races however they refused to supply the same , the court recognised and reiterated that as there is no essential facility in the case so Article 102 cannot be invoked. This case clearly sets the example that the antitrust laws and the doctrine should not be utilised in whatever manner to restrict the rights of the Intellectual Property.
Analysis of the compulsory licensing as a part of copyright also brought an insight into how it is used in the light of competition law provisions. Although per se intellectual property rights do not render dominant position in the market but still gives monopoly to the IP holder which would give competitive edge in the market.
This could give immunity from competition and sometimes the protected work can be an “essential facility” which could be controlled by the patent holder. In such cases refusal to licence would invoke compulsory licensing .
Chapter 3 – Patents and Compulsory Licensing
In contrast with the Copyright, Compulsory licensing is recognised in the Patent law itself. The need for the invention to be worked is felt in the interest of the public. The UK Patents Act 1977 also provides for the grant of compulsory licences under patents in circumstances where it can be established that there has been an abuse of the monopoly rights in relation to such patents. In practice though, compulsory licences are rarely applied for in the UK. This is because more effective provisions for controlling abuse of a monopoly can be found in competition law. However, since the UK is a WTO member, its compulsory licensing regime is intended to comply with the TRIPS agreement as is the legislation in most other economically significant countries that have a compulsory licensing regime.
Patent law is justified through an incentive theory, exclusivity granted to the patent holder without such incentives there would be very less inventions however misuse of such inventions would also need to be balanced. Compulsory licensing is one such method to control the misuse.
Although there are provisions in the national legislation for the invocation of the “compulsory licensing” it is often not explored much. One of the key uses of the compulsory licensing is to access the patented invention without voluntary permission of the patentee.
The origin of the concept of compulsory licensing can be traced back to that of the Statute of monopolies and later to the U.K Patents Act 1883, which further amended into U.K Patents Act 1977.
This existing law has two fold objective of fulfilling the established requirement of working the invention within the country and controlling the behaviour of the patent holder in utilising the patent.
They seek to achieve the balance by controlling the abuse of the monopoly by ‘compulsory licensing’ and the same has been reiterated which declares the general principle upon which patents are granted in England: to encourage invention and to secure the working of new inventions.
Section 46 to 54 of the Act deals with compulsory licensing. According to the statute any third party can file the application but the comptroller has to take into consideration if that third party is capable of working the invention in the territory and if he has proper interest.
However, an application for the patent can only be made after three years from the date of grant of patents.
Criteria to invoke compulsory licensing include
(a) The demand for the patented product is not being met in the in UK on reasonable terms;
(b) Refusal to license of a patent would affect the improvements in that field.
(c) the refusal to license on reasonable terms would unfairly prejudice the exploitation of the product in the United Kingdom and would affect the commercial and industrial activities.
(d) As a consequence the unreasonable terms in the license , the manufacturer which involves an important technical advance of considerable economic significance in relation to the invention for which the patent concerned was granted is prevented or hindered. 
Although in U.K statute itself provides the criteria when the compulsory licensing can be invoked. The above said criteria to invoke apply when the applicant is a “WTO Proprietor”. The criteria are in consonance with the Article 30 and Article 31 of the TRIPS.
It is possible that more than one criteria can be invoked for the grant of compulsory licensing under this section. In the case of EC Commission v United Kingdomthe court held that the if it grants the compulsory license only on the ground that there is no sufficient exploitation of the Patent in the territory and it is met by the importation from the other member state than it acts as concealed restriction on the trade between member states. Held that section 48(A) has to be interpreted in the manner as dealing with all the EEA Member States.
In Monosanto’s Patent it was held that that the party should not be granted compulsory license of the patented product which is used to sell the unpatented solvent for the manufacture of the patented product. The compulsory licensing application should name the members of the working patent after the grant of the compulsory licensing. However, in this scenario application has been rejected by the controller on the concern that the applicant lacks the potential to work the invention after granting the compulsory licensing.
No compulsory license should be granted which would hinder the rights under Ex Article 81 and 82 (current Article 101 and 102 of the TFEU) of the community treaty or the EPC.
In the European Union Perspective Germany is of high relevance as it has been under profile debate scanner for compulsory licensing scenario. The importance of German law transcends borders and has been expanded by technology companies all over the Europe.
Germany holding the Europe’s biggest retail market and Germany by far due to its location and other factors is the most important forum for patent litigation in Europe followed by France.
In the last 20 years, German Courts had a intricate approach towards the Compulsory Licensing of the Patents. Compulsory Licences under the German Competition law is of high relevance, as it obliges the patent holder to grant license on the fair, reasonable and non-discriminatory basis shortly termed as FRAND. The German Court approach to FRAND has tried to fill the gaps left over by the Orange Book Standard ruling,
The concept of compulsory licensing in Germany can be divided into three phases
(a) Section 24 and the decision of Polyferon.
(b) Possibility of Patent licences under the competition law; decision of Spundfass.
(c) Decision of Orange Book Standards.
The original provision dealing with the compulsory licensing is section 24 of PatG . This section addresses the use of the Patent without authorisation of the holder and this section is in consonance with the Article 31 of TRIPS.
The granting authority for the license is the Federal Patent Court in Munich, taking into account the commercial value of the patent remuneration to be paid is determined and the licence is non exclusive.
There are two criteria which has to be met before granting of the compulsory licence is that
(a) Voluntary license has to be sought on reasonable terms, prior to the application under this section.
(b) Public interest test has to be met.
The public interest test is met if there is non-working of the patent in the territory and failing to meet the supply demands of the domestic market.
There are further two special conditions set out for the semiconductor technology.
Between 1923 and 1943 , German Courts granted a total of 23 compulsory licences. The number of applications for compulsory licenses in Germany is somewhat higher than in France and England. During the period from 1924 to 1934, there were one hundred and forty petitions under the law prior to the 1936 Act. During this same period, eighty seven were withdrawn, forty four refused. Fourteen were granted from 1911 to 1925.
Since the inception of the PatG in 1961, only 20 applications are filed so far for the compulsory licences under section 24 before the Federal Patents Court.
“The three cases in which licenses were refused involved the same parties. Providence Machinery Co., Ltd. v. Scott and Williams, Inc, The two cases granting licenses are: The Celotex Corp, E. H. Tate Co. v. Riley.”
Polyferon is the drug used to treat arthritis and is a patented product under the German Law, however, the manufacturer does not hold the Patent. So, requested the license for the same from Patent Holder under reasonable terms. The patent holder has refused the license and filed a case of infringement against the manufacturer. And the District Court Dusseldorf has granted an injunctions restraining the manufacturer sale of the Polyferon .There upon the manufacturer filed for the compulsory licensing under Article 24 of the PatG arguing that the Patent holder product has not been approved or out in the market and that there is a necessity of Polyferon for the treatment of Arthritis in the public interest. 
Federal Court has granted the Compulsory License to the manufacturer but later on refused when appealed on the reasoning that there is no conclusive evidence that it is “essential medication”.
In Polyferon the court has followed a stricter approach of the public interest and reiterated that it could have technical, social, economic or medical needs. But the approach in Plyferon failed to identify the abuse perspective withheld in the competition law.
The debate has been shifted to the Patents and Competition Law. Concept of compulsory licensing under the patents differ from the classical provision under Section 24 of the PatG. Under European law, Article 102 is set out in the treaty of the functioning of the Europe which is similar to Section 19 of the Act against the Restraints of the Competition.Similar to that of Article 102 section 19, 20 and 33 of the GWB deals generally with the anti competitive measures and abuse of dominance. But how these provisions to be analysed in the light of IP has been extensively debated.
This case has been analysed in the next chapter . But the implication of the case are discussed in brief here for better understanding of the three phases of the compulsory licensing in German Patent Law . Implication of this rule involves obligation on the patent holder to grant license in the use of the protected technology is a necessary for entering the product market already where the patent is established.
Orange Book Standard
Facts: Orange Book Standard is part of the Rainbow books a ‘collection of compact disks’. Orange Book deals with the blank CD’s which can be used only once to record .Patent in question being the different recording layers aligned in the blank CD.
Federal Court agreed to the defences under the competition law under two circumstances first is that the defendant should have an offer to the patentee under reasonable terms which shouldn’t have been refused. If they have been refused or the conditions are unreasonable then the defendant can give a unspecified offer and to request the patentee to determine the Royalties under section 315 of Civil code.
Consequently the courts are applying the competition law to the patents that are vital and are in consonance with conditions.
France doesn’t have a provision or a law regulating compulsory-licensing. Patent law provides a proviso where if the patentee fails to work the patent granted then he has the burden of proof for such inaction or he would be deprived of his rights on the patented invention as a patentee.
This provision had not been substantially amended since its enactment except the part where the members of the convention had working period rights for three years.
Patent law also provide for any third party to bring in a claim for revocation of the patent before the civil courts and the public minister has the power of revocation in such a case. Although, patent law provides a check to the abuse and non working provisions but still the number of applications invoked is very less.
Hague amendment to the convention has brought about further certain changes seeking that the revocation is only done in circumstances where there is a need and necessity. And the number of compulsory licensing application unlike German law is very less in the French law.
The judicial interpretation on compulsory licensing is interpreted in a manner by giving emphasis on the term ‘exploitation’ and ‘ non –exploitation’. However it isn’t a necessity that all amendments to the patent should be worked.
As there is no specific law or proviso dealing with the compulsory licensing in France, there has been a confusion in the courts in terms of interpretation and treatment of the non – working scenario of Patents and the revocation proviso had been substituted by the compulsory licensing proviso.
Government of France tried to invoke compulsory licensing in this case where RU 486 is an abortion pill which is taken back from the market by the manufacturer due to the threat of pro life organisations.
Other European Countries
There are compulsory licence provisions in other European countries such as Austria, Bulgaria, Denmark, Finland, Greece, Holland, Italy, Norway, Poland, Russia, Spain, Sweden, Switzerland, and Yugoslavia.
In Austria, Belgium, Bulgaria, Czech Republic, Denmark, Greece, Italy, Latvia, Luxembourg, Hungary, Portugal, Spain, Slovakia and Switzerland (and Liechtenstein), compulsory licences can be invoked only after the expiry three years from grant of patent or four years from the date of filing of the patent.
Swiss law unlike other countries also provides for forfeiture of the patent after expiry of two years from the date of granting the license if compulsory licences are not adequate enough to satisfy the demand in Swiss domestic market, any interested third party may apply or the same.
In other countries like Netherlands, United Kingdom and Ireland, the compulsory licensing can be applied after the expiry of the three years from the date if grant of the patent.
On the other hand Germany is one country in the Europe which requires no time period for invocation of the compulsory licensing it can be invoked anytime after the grant of patent.
One country with no compulsory licensing provision is Iceland.
On the contrast Lithuanian law revoked the compulsory licensing provisions related to the patents, however still has continued the provisions related to the plant varieties act.
There are some European countries in which, there is an additional requirement of demonstrating the working of the patented product in addition to compulsory licences being invoked.
The patent holder in Spain is under obligation to work the patent either himself or through any person on his behalf either in Spain or any other country which is a member state of WTO in a way that it would meet the demand of the national market. And the working has to be proved through submitting an official document to the Register of Intellectual Property.
The possibility of the Compulsory licensing is essential for the demand to be met locally and internationally at the same point. And compulsory licensing also acts a tool to improve the affordability and competition in the society .
Paris Conventions provisions dealing with the compulsory licensing are incorporated into the TRIPS Agreement. Article 31 deals with the utilisation of the patent without the opinion of the patentee involuntarily for government use or third party authorised by the government.However the article doesn’t specifically provide the grounds.
TRIPS also provides that the Patent rights are available irrespective of the region to the Patent holder.
Paris Convention also gives leverage to the member states for the enactment of the legislation or provisions for the grant of compulsory licensing which are essential for regulating the abuse. However, each state has utilised these provisions separately and drafted the legislation in a manner comfortable to the member states.
Various Provisions in TRIPS dealing with Patents
Article 27 of TRIPS
The Agreement requires the member countries to make patents available for any inventions either product or the process without any discrimination to all fields subject to fulfilment of the criteria of novelty, inventive step and industrial applicability.
There are three permissible exceptions to the patentability of the inventions which are one is those inventions against the public order or morality and those which are harmful to the environment and human and plant life .
The next exemption is that Members may prohibit from patentability diagnostic, therapeutic and surgical methods for the treatment of humans or animals .
The third is that “Members may exclude plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, any country excluding plant varieties from patent protection must provide an effective sui generis system of protection. Moreover, the whole provision is subject to review four years after entry into force of the Agreement”.
“Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.” 
Other Use Without Authorization of the Right Holder
“Where the law of a Member allows for other use of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(a) authorization of such use shall be considered on its individual merits;
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non-commercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;
(f) any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use;
(g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;
(i) the legal validity of any decision relating to the authorization of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(j) any decision relating to the remuneration provided in respect of such use shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions which led to such authorization are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”), the following additional conditions shall apply:
(i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent; and
(iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent”. 
The Paris Convention for the Protection of Industrial Property is one of the very first, and perhaps most significant, of the diverse multilateral treaties regulating intellectual property. The Paris Convention pertain to industrial property in wider scope, include patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the oppression of unfair competition.
Paris Convention also provides for Compulsory Licensing of Patents
Article 5 of the Convention states as Follows:
A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licenses
(1) Importation by the patentee into the country where the patent has been granted of articles manufactured in any of the countries of the Union shall not entail forfeiture of the patent.
(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.
(3) Forfeiture of the patent shall not be provided for except in cases where the grant of compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings for the forfeiture or revocation of a patent may be instituted before the expiration of two years from the grant of the first compulsory license.
(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.
(5) The foregoing provisions shall be applicable, mutatis mutandis, to utility models.
Compulsory Licensing in other forms of IP
The concept of compulsory licensing although widely recognised in Patents it has been evolved to inculcate various other forms of IP such as Copyright, Plant Varieties Act and Trademarks. The concept of invoking compulsory licensing to balance the rights granted to the IP holder has gained momentum recently and it has lead to the expansion of the concept into other forms of law.
Although compulsory licensing concept is not a new subject , the use of such licensing is very less and it is comparatively more less in pro IP countries such as developed countries in comparison to the developing countries.
And further to that the use of compulsory licenses in unconventional forms in matters related to other IP subjects is very miniscule.
Let us now further analyse the concept in other forms of IP for better understanding of what criteria forms the basis for invoking compulsory license.
Plant Varieties Act
The very first application under the plant varieties act for the compulsory licensing was unsuccessful. Held that the compulsory license should be granted only in the interest of the public then only one of the required grounds are met.
TRIPS as analysed in the above chapter provides various provisions which allow Members to take measures to regulate the anti-competitive licensing practices as long as such methods are consistent with the other provisions of TRIPS. However, TRIPS expressly mentions that the compulsory licensing is not permitted in the scenario of Trade Marks
This appears to indicate that Members, which include the European Community and its Member States, are not permitted to grant compulsory licences of trademarks even in order to deal with anti-competitive behaviour.
The European Commission further appeared to do the same in the case of Green Dot , without even following the test laid out in earlier cases of Magill and IMS Health. Appeals against those decisions have also been rejected by the ECJ.
The norms in 1991 as per the ordinance of avoiding packaged waste has required all the manufactures to recycle the packaged drinking water either by way of collecting them after the sale or at the customers house.
A German based company, Der Grüne Punkt—Duales System Deutschland AG (DSD),has Green Dot as a registered trademark and its Green Dot logo as a trade mark and in the subsequent year it started providing a gathering and recycling services for manufacturers of all packaged goods throughout the Germany.
Manufacturers who used the DSD services were given license to utilise the Green Dot trade mark on their packaged goods by paying certain amount as a fee. Such fee is collected by the third parties. Further to that DSD sought the opinion of the commission and the same had been in favour of the DSD and furtherance to that the other competitors filed a case against DSD stating that such service amounts to anti competitive practice.
The commission found that DSD is misusing the dominant position in the market by charging fee on utilising the trademark and held that abuse is unfair both in terms and price for the consumer of the system and that the DSD has exploited more than what rights are granted to the trademark holder .This also restrained the users to use alternative services.
However, DSD argued that the commission has issued a compulsory license but Commission argued that it is mere restriction on the terms of license. As ECJ cannot grant “compulsory license on trademarks” due to the restriction provision in the Trips Agreement.
Even by the standards
Even by the standards of competition law, which is rarely the quickest off the blocks, this has been a long-running case. DSD notified its system to the Commission in 1992, the Commission decided that certain aspects were unlawful in 2001 and the final judgment of the ECJ confirming those decisions has now appeared in 2009. The ECJ’s comments on these delays, although directed at the CFI, may have broader impact and may encourage damages actions by those who consider themselves damaged by such delays.
However, even then the judgment of the ECJ is unlikely to prevent further disputes in relation to use of the Green Dot logo. In seeking to avoid the grant of a ‘compulsory licence’, the ECJ has relied heavily on the terms of DSD’s current trade mark licence, noting that it grants a licence for all packaging materials notified to DSD and therefore finding the anti-competitive behaviour in the size of the fee payable for those packaging materials which are not ultimately collected and recovered by the DSD system. While resolving the matter immediately before it, it does not take an enormous leap of imagination to suspect that DSD will change its trade mark licence in the future. Indeed, in August 2008, DSD announced that from 2009 it would decouple its trade mark licence from its recovery service, allowing third parties to use the Green Dot trade mark provided they undertake to comply with the Ordinance on the Avoidance of Packaging Waste. The terms of such licences, or future licences adopted on the basis of the ECJ’s judgment, are likely to come before the competition authorities or courts in due course, in particular in relation to the fees.
More broadly, the ECJ’s judgment should be of some comfort to trade mark owners fearing the imposition of a ‘compulsory licence’. Although DSD was unsuccessful in this particular case, the ECJ’s formalistic approach based on the terms of the trade mark licence give trade mark owners greater scope to avoid any compulsory licensing of their trade marks in the future by careful drafting. However, compulsory licensing should not be viewed in isolation—other aspects of trade mark licences may still be regarded as anticompetitive, raising risks of fines by the competition authorities and claims for damages by third parties. Modern competition scrutiny in the European Community is driven by economic analysis rather than legal formalism, meaning that trade mark owners cannot simply rely on clever drafting of contractual terms but must also ensure that the substance of their licensing arrangements is not anticompetitive.
Grounds for invoking Compulsory licensing
Refusal to deal
Although Intellectual Property do not automatically grant the dominant position to the Intellectual Property Holder in the market but the monopoly granted to the IP holder may somewhat make them behave in the manner dominant to others because of the competitive edge they hold in the market. In extreme cases the IP holder may hold ‘essential facility’ which would enable them to control the market. In such cases refusal to deal would amount to the abuse and infringement of Article 102 of the TFEU.
An outright refusal to license may attract the attention of the competition authorities but however there can be grant of compulsory licensing only in the case of abusive behaviour.
In Sandvik v Pffnerit was held that the rationale of the Magill Case has to be applied in case the patentee fails to supply the patented product or refuses the voluntary license to supply.
Abuse of Dominant Position
European Antitrust law
Article 102 deals with the abuse of dominant position. The term is however not defined in the treaty but some illustrations are provided for practical understanding of the term.
For example this Article can be invoked under two circumstances intervening the Intellectual Property generally.
(a) When the IP holder A puts a clause to B that he would give license only if he buys certain unpatented products from A.
(b) When an IP holder A blocks B from using the patented product which is an “essential facility”.
In the case of Hugin v EC Commission it was held by the court that although Hugin did not hold a dominant position based on its share in the market for the sale of the cash registers still holds a dominant position in terms of the spare parts for its registers as they are not interchangeable with any.
In the case of Eurofix and Bauco v Hilti ,defendant has been fined by the commission for the controlling the supply of the unpatented nails with that of the patented guns. Besides the fine defendant also agreed not to assert its rights under the copyright in its licensing rights of the patented products.
Abusive form of conduct can be best understood from the cases of Volvo and Renault,where the manufacturer of cars refused to grant license of spare parts leveraging the market as the spare parts are necessary for the independent repairers . Such refusal clearly states that the rights have been abused.
In Standard v Spundfass belonged to the Verband der Chemischen Industire chemical industry requested a barrel with improved residue draining capacity and once the technology has been identified the same has been set as the industry standard but the technology used is patented and refused by the inventor to license it to the Barrel manufacturer. Court held that same amount to abuse of dominance under Article 102 of the TFEU which is similar to the existing provision in German competition law section 19 and 20 of Gesetz gegen Wettbewerbbeschrankungen. In the case inventor had licensed some but not completely , hence court held that to be unjustifiable.
In SAEM v NMPP v Council de la Concurrence, Cour d ‘ Appel de Paris dismissed an Appeal which requested the national wide distributor to grant another nationwide distributor access to computer program . The conseil held that the computer program was the “essential facility” for the distribution of newspaper and magazines for the whole of france. The Cour d Appel held that since the license has already been granted to other nationwide distributor , it would therefore grant access to other nationwide distributors on the equal terms.
Inadequate Supply /Non working
Section 55-59 of the Patents Act grants powers to the government in case of necessity. There is no exhaustive list when this provision can be used. It can be used in the matter of national emergency , outbreak or war or to a drug supply to the national health service. There is no limitation for the invocation of this provision. Further is paid upon either agreement of the parties or settlement of the court.
Feather v Queen, the applicant Robert Bernard Feather the patent holder of the “improvement in the construction of ships and vessels “. The applicant claimed that the commissioner has infringed his patent while building a ship called ‘Enterprise’. Whereas the commissioner had explained that it is part of his duty and had been built as a service to the crown. The applicant further questioned the court as to whether the Crown can use the Patented Product without the permission of the patentee. This led to the emergence of the concept of crown use even before the Act of 1883.
However, the court has rejected the Feather application on number of different grounds one is that there is no express mention or words that the crown needs permission for utilising the patent and secondly that the patent is the contract between the patentee and the crown and thirdly that the subjects listed out did not include crown. So, the patentee doesn’t enjoy the remedy against the crown.
This case has been repealed further to the enactment of the Section 27 of 1883 Act which states that the patent has like affect even against the crown and her successors as to any normal subject. However, the force is limited. This also extended the patentee rights even against the agents of the crown.
Further to this Patent Act 1907, 1949 and 1977 continued to enact a provision which gives like affect against the crown.
Further the authorisation from the crown needs to be in writing, rights of third parties and other emergency circumstances that allow crown use are regulated.
Case of Pfizer Corporation Appellants v Ministry of Health Respondents 1965 illustrated the scope of the ‘service of the crown’ under the 1949 Act.
Compulsory Licensing of Medicines
Pharmaceutical Patents confer legal monopoly over the invented drug and gives the manufacturers exclusive rights to sell, use and import the patented products. This puts the manufacturers in a dominant position in the market and medicines being part of one of the ‘essential market’. It has to be regulated as it is widely significant for the human welfare. Trips Agreement Article 31 (k) provides for the compulsory licensing of patents and also regulates access to essential medicines and exportation and importation of the generic versions to the less developed nations.
Further to that Doha Declaration provided a declaration for Public Health , which has provided for the access of medicines for some of the common diseases such as HIV/AIDS, Tuberculosis , Malaria and other epidemics to the developing and the less developed countries.
Biotechnology Directive 
Where a breeder cannot acquire or exploit a plant variety right without infringing a prior patent he can apply for a compulsory licensing of the patent. The license should be subjected only to a non- exclusive use and the licensee should pay set amount as royalty for the same.
The criteria which has to be met in order for the invocation under this directive is 
(a) Application to the patent holder for the voluntary license has been successfully made
(b) The patented plant variety involves subsequent technical progress and economic significance than the invention claimed in the patent.
The comparison of compulsory licensing in copyright and patent law highlights that while in patent law it balances the abuse and protects the interests of the patented whereas in copyright also Compulsory licensing of the derivative works or new value added uses in copyright market are generally not existing in international, regional and national copyrighted works . European copyright law provides for the doctrine of “free derivative use”. However the concept of compulsory licensing in the copyright scenario doesn’t exist and general it exists and is provided by way of competition law.
Further, in terms of other IP scenario like Trademarks compulsory licensing is restricted and other forms of derivative works and Pant Varieties Act provide for Compulsory licensing .
As Chapter 5 highlights the common grounds for invoking the compulsory licensing we can come to a conclusion that the grounds although used for patents and copyright differ but still the common objective is to restrict the abuse and misuse of the monopoly.
However, the grounds for invocation differ only on the basis of technicality and subjective scope and the criteria however is only expressly mentioned in terms of Patent so other forms of IP has a non restrictive scope of grounds for invocation of compulsory licensing .
And the scope of the grounds is non exhaustive and can be further expanded to inculcate and intervene anything relevant even outside the ambit of intellectual property just like how in the copyright scenario it is invoked on the basis of the Anti competitive provisions .
In the same manner compulsory licensing although looked in negative perspective it has facilitated and improved the use of the patented product and had created a beneficial impact in developing countries.
And the criteria since it is overlapping it can be further used for other forms of IP as well such as derivative works of Patents, Copyright and other subjects as Intellectual Property law is drafted in a conventional manner based on incentive theory where incentive is in terms of exclusivity and monopoly.
Pro IP scenario like United States differs its perspective in terms of compulsory licensing in comparison to the Pro competition scenario of Europe.
Conclusions and Suggestions
1. Consolidated version of the Treaty on the Functioning of the European Union (2012) OJ C 326/47.
2. Council Directive 2006/116/EC of 12 December 2006 on the term of protection of copyright and certain related rights OJ L372/12.
3. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs OJ L 3.
4. Council Regulation (EC) No 1/2003 of 16 December 2002 on the implementation of the rules on competition laid down in Articles 81 and 82 of the Treaty OJ L 1/1.
5. Commission Regulation (EU) No 330/2010 of 20 April 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices OJ L 102/1.
6. European Patent Convention 1973.
7. EUMR Council Regulation (EC) No 139/2004 of 20 January 2004 on the control of concentrations between undertakings (the EC Merger Regulation) OJ L 24/1.
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