Articles 23-24-25 of the Patent and Designs Law as recently amended state out that:
If the owner of a patent or a utility certificate have not used the invention or have used it in an insufficient manner, any interested party may apply for a compulsory licence pursuant to the procedures indicated in article (29) of the law herein, according to the following conditions:
- the lapse of at least three years after granting the patent;
- the applicant for licensing should prove that he exerted, within a reasonable period of time, efforts for obtaining a licence from the patent owner with a reasonable compensation and under reasonable commercial conditions;
- the licence shall be non-exclusive;
- the licence should be basically for the purpose of fulfilling the demands of the local market;
- the licensing decision should determine the scope and period of licensing pursuant to the purpose for which it was granted;
- if the invention is related to semiconductors technology the licensing should only be granted for public and non-commercial use or to remedy a practice determined after Judicial or administrative process to be anti-competitive;
- the granting of a compulsory licence shall not preclude granting of other compulsory licences. The competent court shall decide pursuant to the request of the interested parties, either to prevent the owner of the letters patent or the utility certificate, from using the invention itself, or otherwise grant him other licences for using thereof;
- the competent court may not disregard the first and second item if the compulsory licence was granted as a result of public emergency, the dire need of the public for such, or for public and non-commercial uses;
- a compulsory licence for exploiting the patent may be issued if the invention is important for the public interest;
- pursuant to a decree by the Minister, a compulsory licence for exploiting the patent or utility certificate protected invention may be issued if the invention is important for the public interest;
- the licensee shall have the right to use the civil and penal rights of the owner of the patent or the utility certificate to protect or to use the invention if such owner had omitted such use in spite of notifying or informing him of any illegal action;
- article 25 of the above-mentioned Law provides that if it is impossible to use an invention protected by a patent or a utility certificate in the United Arab Emirates without violating rights derived from a patent or a utility certificate granted by virtue of a previous application, then it is permissible to grant the owner of the letters patent or the utility certificate a compulsory licence according to the conditions set forth in article (28) of such law to the degree necessary to use his invention if such invention serves industrial purposes different from such purposes related to the invention of the former patent or utility certificate or represents a marked technical advance in relation thereto;
- if the two inventions serve the same industrial purpose, the compulsory licence shall be granted to the subsequent patent or utility certificate while keeping the right for the owner of the former patent or utility certificate to obtain a licence for the subsequent patent or utility certificate, if he applies for such;
- the two parties may also agree in writing between them and notify the Administration of their agreement to record it in the related register.
Article 29 of the same Law states out the following:
- the application for the compulsory licence shall be submitted to the competent court in the form of an action filed against the owner of the patent or utility certificate, and the Administration shall be informed to arrange for the attendance of an administration representative. The court may grant the two parties a period of time it determines for them to come to an agreement and it is permissible to extend the period if the court recognizes a reason to do so. Upon the termination of the period, the court shall examine the application for either rejecting or granting the compulsory licence. If granted the court shall define the conditions and the scope thereof and determine the compensation for the owner of the patent or the utility certificate according to the provision of article (23) of such act, and the judgment shall be served to the other party and to the Administration to register it in the related register and to be published in the official gazette after paying the fixed fee, and the judgment shall have no impact concerning the third party except from the date of publication.
