The following table contains the individual TRIPS conditions and the relevant sections of the Patents Act. Section 34 contains the provisions of the compulsory license and s. 37 contains provisions on non-voluntary licences.<br><br>
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<td><b>TRIPS Conditions</b></td>
<td><b>Patents Act</b></td> <tr>
<td><b>31(a): authorization of such use shall be considered on its individual merits</b></td>
<td>s. 34(3) The Minister shall make his or her decision [to exploit the patent] after hearing the owner of the patent and any interested person.
<br>s. 37(1) provides that the Court, on the action of the prospective licensee, determines the grant of a non-voluntary licence. The merits of each individual suit will be considered.</br>
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<tr><td><b>31(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;</b></td>
<td>S. 34(4) A request for the Minister's authorisation to exploit a patented invention shall be accompanied by evidence that the owner of the patent has received, from the person seeking the authorisation, a request for a contractual licence, but that that person has been unable to obtain such a licence on reasonable commercial terms and conditions and within a reasonable time.
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<br>s.34(5) Subsection (4) of this section shall not apply in cases of</br>
<br>(a) national emergency or other circumstances of extreme urgency provided, however, that in such cases the owner of the patent shall be notified of the Minister's decision as soon as reasonably practicable.</br>
<br>(b) public non-commercial use; and</br>
<br>(c) anti-competitive practices determined as such by the Minister. </br>
<br>The provisions on non-voluntary licenses do not contain provisions which mandate the prospective applicant must first seek the permission of the right holder. This has been flagged for our ongoing legislative review.
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<td><b>31(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;</b>
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<td>s. 34(2) The exploitation of the patented invention shall be limited to the purpose for which it was authorised and shall be subject to the payment to the said owner of an adequate remuneration therefor, taking into account the economic value of the Minister's authorisation, as determined in the said decision, and, where the Minister has determined that practices are anti-competitive, the need to correct such practices.</br>
<br>s. 34(6) The exploitation of a patented invention in the field of semi-conductor technology shall only be authorised for public non-commercial use or where a judicial or administrative body has determined that the manner of exploitation of the patented invention, by the owner of the patent or his or her licensee, is anti-competitive, and if the Minister is satisfied that the issuance of the non-voluntary licence would remedy such practice.</br>
<br>Section 37(10) prohibits the grant of non-voluntary licenses in the field of semi-conductor technology. Where the Court is minded to grant the licence, it is bound by s. 37(3) to expressly order the scope and function of the licence, the time limit within which the licensee must begin to exploit the patented invention and the amount and conditions of remuneration to be paid to the first right holder.</br></td></tr>
<tr><td><b>31(d) such use shall be non-exclusive</b>
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<td>s. 34(7) The authorisation shall not exclude</br>
<br>(a) the conclusion of license contracts by the owner of the patent;</br>
<br>(b) the continued exercise, by the owner of the patent, of his or her rights under section 33(2); or</br>
<br>(c) the grant of a non-voluntary licence under section 38 of this Act.</br>
<br>Under s. 37, non-voluntary licenses can be granted to "any person interested". Section 37(5) also gives the Court the power to issue a non-voluntary license to the later patent holder where that later patent cannot be exploited without infringing an earlier patent.</br>
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<tr><td><b>31(e) such use shall be non-assignable, except with that part of the enterprise or goodwill which enjoys such use;</b>
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<td>s. 34(2) quoted above</br>
<br>s. 34(8) Where a third person has been designated by the Minister, the authorisation may only be transferred with the enterprise or business of that person or with the part of the enterprise or business within which the patented invention is being exploited.</br>
<br>There are no express provisions referring to the ability to assign non-voluntary licenses but it is open to the Court to make an order related to the scope of the licence.</br>
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<tr><td><b>31(f) any such use shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use;</b>
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<td>s. 34(9) The exploitation of the patented invention by the Government agency or third person designated by the Minister shall be predominantly for the supply of the market in Saint Christopher and Nevis.</br>
<br>The beneficiary of a non-voluntary licence shall have the right to exploit the patented invention only within St. Christopher and Nevis [s. 37(4)(a)]</br></td></tr>
<tr><td><b>31 (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;</b>
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<td>s. 34(11) Upon the request of the owner of the patent, the Minister shall terminate the authorisation if he or she is satisfied, after hearing the parties, that the circumstances which led to his or her decision have ceased to exist and are unlikely to recur, or that the Government agency or third person designated by him or her has failed to comply with the terms of the decision.</br>
<br>s. 34(12) Notwithstanding subsection (11) of this section, the Minister shall not terminate the authorisation if he or she is satisfied that the need for adequate protection of the legitimate interests of the Government agency or third person designated by him or her justifies the maintenance of the decision.
The Patent Act grants the right to both the right holder and an exclusive licensee to bring proceedings before the Court for infringement (s. 44).
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<tr><td><b>31(h) the right holder shall be paid adequate remuneration in the circumstances of each case, taking into account the economic value of the authorization;</b>
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<td>s.34(2) quoted above
Where the Court has granted a non-voluntary licence, it must fix the amount of remuneration to be paid to the patentee and the conditions of payment. [s.37(3)(c)
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<tr><td><b>31(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;</b>
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<td>s. 61(1) The Court shall have jurisdiction in cases of disputes relating to the application of this Act and the Regulations, and in matters which, under this Act, may be brought before it.
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<br>(2) Any person who is aggrieved by a decision of the Minister or the Registrar under this Act may, within two months of that decision, appeal to the Court.
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<br>Decisions of the Court in relation to compulsory or non-voluntary licenses are always subject to judicial review by the Eastern Caribbean Supreme Court of Appeal.</br></td>
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<tr><td><b>31(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</b>
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<td><br>s. 61 quoted above </br>
<br>Decisions of the Court in relation to compulsory or non-voluntary licenses are always subject to judicial review by the Eastern Caribbean Supreme Court of Appeal.</br></td></tr>
<tr><td><b>31(k) 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;</b>
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<td><br>s. 61 quoted above</br></td></tr>
<tr><td><br><b>31(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:</br>
<br><b>(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;</br>
<br><b>(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</br>
<br><b>(iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.</br></b>
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<td><br>Section 37(5) provides that "Where the invention claimed in a patent, referred to in this section as a "later patent", cannot be exploited in Saint Christopher and Nevis without infringing a patent granted on the basis of an application benefiting from an earlier filing, or, where appropriate, priority date, referred to in this section as an "earlier patent", and if the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent, the Court may, upon the application of the owner of the later patent, issue a non-voluntary licence to the extent necessary to avoid infringement of the earlier patent.</br>
<br>S. 37(6) gives the earlier patent right holder the power to apply to the Court for a non-voluntary licence in respect of the later patent.</br>
<br>S. 37(8) provides that a transfer of the later patent can only be made with the earlier patent.
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