questionnaire on exceptions and limitations to patent rights

Intellectual Property Division, Ministry of Economic Affairs
Kingdom of Bhutan

Section 1 General
Section 2 Private and/or non-commercial use
Section 3 Experimental use and/or scientific research
Section 4 Preparation of medicines
Section 5 Prior use
Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
Section 7 Acts for obtaining regulatory approval from authorities
Section 8 Exhaustion of patent rights
Section 9 Compulsory licensing and/or government use
Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
Section 11 Other exceptions and limitations

Section 1: General

1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.

Industrial Property Act of the Kingdom of Bhutan, 2001, Section 5 on Patentable Invention states that;

(1) An invention is patentable if it is new, involves an inventive step and is industrially applicable.

(2)(a) an invention is new if it is not anticipated by prior art.
(b) prior art shall consist of everything disclosed to the public, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way, prior to filing or, where appropriate, the priority date, of the application claiming the invention.
(c) for the purposes of paragraph(b), disclosure to the public of the invention shall not be taken into consideration if it occurred within twelve months preceding the filing date or, where applicable, the priority date of the application, and if it was by reason or in consequence of acts committed by the applicant or his predecessor in title or of an abuse committed by a third party with regard to the applicant or his predecessor in title.

(3) An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention and as defined in subsection (2)(b), it would not have been obvious to a person having ordinary skill in the art.

(4) An invention shall be considered industrially applicable if it can be made or used in any kind of industry. "Industry" shall be understood in its broadest sense; it shall cover, in particular, handicraft, agriculture, fishery and services.

(5) Inventions, the commercial exploitation of which would be contrary to public order or morality, shall not be patentable.

Since the patent registry is not in place, the interpretation of standards of patentability conditions for different technology did not arise.

Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.

Industrial Property Act of Kingdom of Bhutan, 2001, Section 4 on Definitions states that;

(3) The following, even if they inventions within the meaning subsection (2), shall be excluded from patent protection:
(i) discoveries, scientific theories and mathematical methods;
(ii) schemes, rules or methods for doing business, performing purely mental acts or playing games;
(iii) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body; this provision shall not apply to products for use in any of those methods.

There is no other source for such exclusion.

2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?

Industrial Property Act of the Kingdom of Bhutan, 2001, Section 13, Rights Conferred by Patent states that;

13.(1) The exploitation of the patented invention in Bhutan by persons other than the owner of the patent shall required the latter's agreement.
(2) For the purposes of this Acts, "exploitation" of a patented invention means any of the following acts:
(a) when the patent has been granted in respect of a product:
(i) making, using, offering for sale, selling or importing for these purposes that product;
(ii) stocking such product for the purposes of offering for sale, selling or using;
(b) when the patent has been granted in respect of a process:
(i) using the process;
(ii) doing any of the acts referred to in paragraph (a) in respect of a product obtained directly by means of the process.

The second part of the question is not applicable as the Industrial Property Act of the Kingdom of Bhutan has publication only after the grant.

3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):

Experimental use and/or scientific research;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Exhaustion of patent rights;
Compulsory licensing and/or government use.

Section 2: Private and/or non-commercial use

4.-10.

[Note from the Secretariat: the applicable law of the Kingdom of Bhutan does not provide exceptions for private and/or non-commercial use.]

Section 3: Experimental use and/or scientific research

11. If the exception is contained in statutory law, please provide the relevant provision(s):

Section 13 (4) of the Industrial Property Act of the Kingdom of Bhutan states;

(4)(a) The rights under the patent shall not extend:
(iii) to acts done only for experimental purposes relating to a patented invention; or

12. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:

13.(a) What are the public policy objectives for providing the exception?

Promotion of R&D

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:

No, the applicable law does not make a distinction concerning the nature of the organization conducting the experimentation or research.

15. If the applicable law defines the concepts "experimental use" and/or "scientific research", please provide those definitions by citing legal provision(s) and/or decision(s):

The applicable law does not define the concepts "experimental use" and/or "scientific research".

16. If the purpose of experimentation and/or research is relevant to the determination of the scope of the exception, please indicate what that purpose is:

Not specified in the applicable law.

17. If any of the following criteria is relevant to the determination of the scope of the exception, please indicate:

Research and/or experimentation must be conducted on or relating to the patented invention ("research on")

Please explain by citing legal provision(s) and/or decision(s):

Section 13 (4) of the Industrial Property Act of the Kingdom of Bhutan states;

(4)(a) The rights under the patent shall not extend:
(iii) to acts done only for experimental purposes relating to a patented invention;

18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:

Not specified in the applicable law.

19. If the applicable law makes a distinction between "commercial" and "non-commercial" purpose, please explain those terms by providing their definitions, and, if appropriate, examples. Please cite legal provision(s) and/or decision(s):

Not specified in the applicable law.

20. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):

Our law does not provide for other criteria to be applied in determining the scope of the exception.

21. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

[Note from the Secretariat: response not provided.]

22. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:

Since we don't have a Patent Registration System, most of the exceptions have not been implemented in our country.

Section 4: Preparation of medicines

23.-30.

[Note from the Secretariat: the applicable law of the Kingdom of Bhutan does not provide exceptions for the preparation of medicines.]

Section 5: Prior use

31. If the exception is contained in statutory law, please provide the relevant provision(s):

Section 13 (4) of the Industrial Property Act of the Kingdom of Bhutan states;

(4)(a) The rights under the patent shall not extend:
(iv) to acts performed by any person who in good faith, before the filing or, where priority is claimed, the priority date of the application on which the patent is granted, was using the invention or was making effective and serious preparations for such use in Bhutan.

32. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:

33.(a) What are the public policy objectives for providing the exception? Please explain:

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response not provided.]

34. How does the applicable law define the scope of "use"? Does the applicable law provide for any quantitative or qualitative limitations on the application of the "use" by prior user? Please explain your answer by citing legal provision(s) and/or decision(s):

No, the applicable law does not define the scope of "use" and does not provide for any quantitative or qualitative limitations on the application of the "use" by prior user.

35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:

No, the applicable law does not provide for a remuneration to be paid to the patentee for the exercise of the exception.

36. According to the applicable law, can a prior user license or assign his prior user's right to a third party?

Yes

37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?

No.

Section 13(4)(b) of the Industrial Property Act of the Kingdom of Bhutan provides that "The right of prior user referred to in paragraph (a)(iv) may be transferred or devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the use or preparations for use have been made".

The above provision in the applicable law does not address the conditions under which the transfer or licensing of the prior user's right is allowed. This has not been addressed in other provisions of the applicable law and its rules.

38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?

It has not been specified in our applicable law.

If yes, please explain the conditions under which such use can continue to apply:

N/A

39.-41.

[Note from the Secretariat: response not provided.]

Section 6: Use of articles on foreign vessels, aircrafts and land vehicles

42. If the exception is contained in statutory law, please provide the relevant provision(s):

Section 13(4) of the Industrial Property Act of the Kingdom of Bhutan states;

(4)(a) The rights under the patent shall not extend:
(ii) to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Bhutan;

43. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:

44.(a) What are the public policy objectives for providing the exception? Please explain:

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response not provided.]

45. The exception applies in relation to:

Vessels;
Aircrafts;
Land Vehicles.

46. In determining the scope of the exception, does the applicable law apply such terms as "temporarily" and/or "accidentally" or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

The applicable law does not provide any definition of the terms "temporarily" and "accidentally".

47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):

No, the applicable law does not provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft).

48. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):

49.-50.

[Note from the Secretariat: response not provided.]

Section 7: Acts for obtaining regulatory approval from authorities

51. -59.

[Note from the Secretariat: the applicable law of the Kingdom of Bhutan does not provide exceptions for acts for obtaining regulatory approval from authorities.]

Section 8: Exhaustion of patent rights

60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:

National

If the exception is contained in statutory law, please provide the relevant provision(s):

Section 13(4) of the Industrial Property Act of the Kingdom of Bhutan states;

(4)(a) The rights under the patent shall not extend:
(i) to acts in respect of articles which have been put on the market in Bhutan by the owner of the patent or with his consent;

If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

61.(a) What are the public policy objectives for adopting the exhaustion regime specified above? Please explain:

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

62. Does the applicable law permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country?

No. The applicable law does not permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country.

Please explain your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

63. Has the applicable exhaustion regime been considered adequate to meet the public policy objectives in your country? Please explain:

[Note from the Secretariat: response was not provided.]

64. Which challenges, if any, have been encountered in relation to the practical implementation of the applicable exhaustion regime in your country? Please explain:

Patent Registration System has not started yet. Therefore, the exceptions available in our law have not been implemented.

Section 9: Compulsory licensing and/or government use

Compulsory licenses

65. If the exception is contained in statutory law, please provide the relevant provision(s):

Section15, Industrial Property Act of the Kingdom of Bhutan, 2001:

Exploitation by Government or Person thereby Authorized

15. (1) Where

(i) the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy so requires; or
(ii) a judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive, and the Minister is satisfied that the exploitation of the invention in accordance with this subsection would remedy such practice:

the Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Minister may exploit the invention. The exploitation of the invention shall be limited to the purpose for which it was authorized and shall be subjected to the payment to the said owner of an adequate remuneration therefor, taking into account the economic value of the invention, as determined in the said decision, and, where a decision has been taken under paragraph (ii), the need to correct anti-competitive practices.

66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):

Anti-competitive practices and/or unfair competition;
Public interest;
National emergency and/or extreme urgency including government use;
Refusal to grant licenses on reasonable terms.

68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

69. If the applicable law provides for the grant of compulsory licenses on the ground of "non-working" or "insufficient working", please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

Not specified in the applicable law.

70. Does the importation of a patented product or a product manufactured by a patented process constitute "working" of the patent? Please explain your answer by citing legal provision(s) and/or decision(s):

Not specified in the applicable law.

71.-72.

73. If the applicable law provides for the grant of compulsory licenses on the ground of refusal by the patentee to grant licenses on "reasonable terms and conditions" and within a "reasonable period of time", please provide the definitions given to those terms by citing legal provision(s) and/or decision(s):

Section15, Industrial Property Act of the Kingdom of Bhutan, 2001:

Exploitation by Government or Person thereby Authorized

15. (6) A request for the Minister's authorization shall be accompanied by evidence that the owner of the patent has received, from the person seeking the authorization, a request for a contractual license, but that person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time.

74. If the applicable law provides for the grant of compulsory licenses on the ground of anti-competitive practices, please indicate which anti-competitive practices relating to patents may lead to the grant of compulsory licenses by citing legal provision(s) and/or decision(s):

Section15, Industrial Property Act of the Kingdom of Bhutan, 2001:

Exploitation by Government or Person thereby Authorized

15. (1) Where
(ii) a judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive, and the Minister is satisfied that the exploitation of the invention in accordance with this subsection would remedy such practice:

75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:

76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:

No, the applicable law does not provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee.

77. If the applicable law provides for the grant of compulsory licenses on the ground of "national emergency" or "circumstances of extreme urgency", please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

Yes, the applicable law provides for the grant of compulsory licenses on the ground of "national emergency" or "circumstances of extreme urgency". However, their concepts and scope of application have not been specified.

78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:

None

79.-80.

[Note from the Secretariat: response was not provided.]

Government use

81. If the exception is contained in statutory law, please provide the relevant provision(s):

Section15, Industrial Property Act of the Kingdom of Bhutan, 2001:

Exploitation by Government or Person thereby Authorized

82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):

Anti-competitive practices and/or unfair competition;
Public interest;
National emergency and/or extreme urgency including government use;
Refusal to grant licenses on reasonable terms.

84.(a) What are the public policy objectives for providing government use in your country?

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

85. If the applicable law provides for the grant of government use on the ground of "national emergency" or "circumstances of extreme urgency", please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

The applicable law does not define these two concepts and their scope of application.

86. Please indicate how many times and in which technological areas government use has been issued in your country:

None

87. Is the applicable legal framework for the issuance of government use considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:

[Note from the Secretariat: response was not provided.]

88. Which challenges, if any, have been encountered in relation to the use of the government use mechanism in your country? Please explain:

Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions

89.-100.

[Note from the Secretariat: the applicable law of the Kingdom of Bhutan does not provide exceptions and limitations related to farmers' and/or breeders' use of patented inventions.]

Section 11: Other exceptions and limitations

101.-103.

[Note from the Secretariat: the applicable law of the Kingdom of Bhutan does not provide other exceptions and limitations.]

[End of questionnaire]

September 2011

Intellectual Property Division, Ministry of Economic Affairs Kingdom of Bhutan

Section 1: General

Section 2: Private and/or non-commercial use

Section 3: Experimental use and/or scientific research

Section 4: Preparation of medicines

Section 5: Prior use

Section 6: Use of articles on foreign vessels, aircrafts and land vehicles

Section 7: Acts for obtaining regulatory approval from authorities

Section 8: Exhaustion of patent rights

Section 9: Compulsory licensing and/or government use

Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions

Section 11: Other exceptions and limitations

Intellectual Property Division, Ministry of Economic Affairs
Kingdom of Bhutan