Questionnaire on exceptions and limitations to patent rights

Djiboutian Office of Industrial and Commercial Property

(English translation by WIPO)

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 licenses 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

NB: The Djiboutian Office of Industrial and Commercial Property is in the process of being set up. It has not yet received any application filings for industrial property titles. The responses to the questionnaire are taken from the Law on Industrial Property Protection. The exceptions and limitations provided for by this Law have not been implemented.

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.

The relevant standard is set by the articles thus cited from Law No. 50/AN/09/6th L on Industrial Property Protection:

Article 22:
Any new invention involving an inventive step and which is industrially applicable shall be patentable.

Article 23:
An invention shall be considered to be new if it is not included in the prior art.
An invention shall be considered to involve an inventive step if, for a person skilled in the art, it is not obvious from the prior art.

The prior art shall consist of everything that has been made available to the public anywhere in the world by means of a written or oral description, use or any other means, before the patent application filing date in Djibouti or of a patent application filed abroad and priority for which is validly claimed.

The prior art shall also be considered to include the content of patent applications filed in Djibouti or of international applications, as filed, which have a filing date prior to that mentioned in the second paragraph of this Article and which have been published only at this date or at a later date.

Article 24:
An element of the prior art which may be opposed to an invention claimed in a patent application filed in Djibouti shall have no impact on the patentability of the invention in so far as this element would have been included in the prior art on a date falling during the 12 months preceding the date of application filing in Djibouti or the priority date claimed in the application, as a result of acts committed
(i) by the applicant or his legal successor,
(ii) by a patent office which appears to have unlawfully published or made available to the public a patent application filed by the applicant or his legal predecessor, or an application filed without the knowledge or consent of the applicant or his legal predecessor by a third party that has obtained the information directly or indirectly from the applicant or his legal predecessor, or
(iii) by a third party that has obtained directly or indirectly from the inventor the information contained in the element of the prior art.

Article 25:
An invention shall be considered industrially applicable if its subject matter may be manufactured or used in any kind of industry, including agriculture.

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.

The source in question is the following articles of Law No. 50/AN/09/6th L on Industrial Property Protection:

Article 26:
The following shall not be considered inventions:
(a) discoveries, substances, materials and organisms as they exist in nature, and parts or elements thereof;
(b) scientific theories and mathematical methods;
(c) the human body and the materials of which the human body is made up, at the different stages of its constitution and development, together with elements thereof, including the sequence or partial sequence of a gene;
(d) essentially biological processes for obtaining plants or animals;
(e) literary and artistic works or any other aesthetic creation;
(f) plans, principles and methods in the exercise of intellectual activities, games or in the field of economic activities;
(g) computer programs;
(h) information presentations.

Article 27:
The following shall not be patentable;
(a) plants and animals other than microorganisms;
(b) diagnostic, therapeutic and surgical methods for the treatment of persons or …(TEXT INCOMPLETE);
(c) inventions, the commercial exploitation or implementation of which would be contrary to ordre public or morality, or would harm the health or life of persons, animals, plants or the environment.

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?

The exclusive rights granted to the patent owner are listed in the following articles of Law No. 50/AN/09/6th L on Industrial Property Protection:

Article 53:
An invention patent shall confer on its owner the right to prohibit unauthorized third parties from performing the following acts:
(a) in the cases where the subject matter of the patent is a product, manufacturing, using, offering for sale, selling or importing the product for such purposes;
(b) in the cases where the subject matter of the patent is a process, using the process and using, offering for sale, selling or importing for these purposes the product directly obtained by such a process.

Article 54:
Also prohibited shall be, failing the consent of the patent owner, the delivery or offer of delivery on Djiboutian territory to a person other than the person authorized to work the patented invention, of means of implementing, on that territory, the invention relating to an essential element thereof, where the third party knows or where the circumstances make it obvious that such means are suitable and intended for such implementation. The provisions of the above paragraph shall not apply where the means of implementation are products which are commonly found on sale, apart from where the third party encourages the person to whom he delivers to commit acts prohibited by Article 53 above.

Persons performing the acts referred to in Article 55 below shall not be considered authorized to work the invention, as per the first paragraph above.

Or where a third party may exercise such influence over one or other of these persons;

Article 56:
The rights attached to a patent application or to a patent shall be transferable in full or in part.
They may be subject, in full or in part, to an exclusive or non-exclusive working license grant, and also be pledged.

The rights conferred by the patent application or patent may be invoked against a licensee who infringes one of the limits of his license imposed under the previous paragraph.
Subject to the provisions of Article 19 above, transfer of the rights referred to in the first paragraph of this Article shall not infringe the rights acquired by third parties before the date of transfer.
The acts comprising a transfer or a license, referred to in the first two paragraphs above shall be recorded in writing, on pain of invalidity.

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

Compulsory licensing and/or government use.

Section 2: Private and/or non-commercial use

4.-10.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to private and/or non-commercial use.]

Section 3: Experimental use and/or scientific research

11.-22.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to the experimental use and/or scientific research.]

Section 4: Preparation of medicines

23.-30.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to the preparation of medicines.]

Section 5: Prior use

31.-41.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to prior use.]

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

42.-50.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to the use of articles on foreign vessels, aircrafts and land vehicles.]

Section 7: Acts for obtaining regulatory approval from authorities

51.-59.

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

Section 8: Exhaustion of patent rights

60.-64.

[Note from the Secretariat: the applicable law of Djibouti does not provide exceptions related to exhaustion of patent rights.]

Section 9: Compulsory licenses and/or government use

Compulsory licenses

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

The provision is contained in Law No. 50/AN/09/6th L on Industrial Property Protection, Article 61: A request for a compulsory license shall be lodged with the courts. Such a request must be accompanied by the proof that the applicant has been unable to obtain from the patent owner a contractual license, in particular on reasonable commercial terms and conditions. Such proof shall not be required in the cases provided for in the following paragraph.

The courts may decide at any time that, even without the agreement of the patent owner, a State service or a third party designated by the courts may work the invention where:
(i) public interest, in particular national security, nutrition, health or the development of other vital sectors of the national economy so requires,
(ii) it is determined that the manner in which the patent owner or his licensee works the invention or otherwise uses the patent is anti-competitive or constitutes an abuse of the exclusive rights conferred by the patent. In the cases provided for in the previous paragraph and in any case of public use for non-commercial purposes, or in situations of national emergency, the patent owner shall nevertheless be informed of the decision as soon as it is reasonably possible.

66.-80.

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

Government use

81.-83.

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

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

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

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

The following is stated in Law No. 50/AN/09/6th L on Industrial Property Protection, Article 61: A request for a compulsory license shall be lodged with the courts. Such a request must be accompanied by the proof that the applicant has been unable to obtain from the patent owner a contractual license, in particular on reasonable commercial terms and conditions. Such proof shall not be required in the cases provided for in the following paragraph.

85.-86.

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

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:

No.

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

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

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 Djibouti does not provide exceptions and limitations related to farmers' and/or breeders' use of patented inventions.]

Section 11: Other Exceptions and Limitations

101. Please list any other exceptions and limitations that your applicable patent law provides:

Another exception is contained in Law No. 50/AN/09/6th L on Industrial Property Protection, Article 75:

The ex officio license shall be granted at the request of the Minister of Defense by Presidential Decree. This Decree shall fix the conditions for granting the license to the exclusion of those relating to the royalties to which it gives rise. The license shall take effect on the date on which the ex officio license is requested.

Failing an amicable agreement between the patent owner and the Minister of Defense, the amount of the royalties shall be fixed by the Civil and Commercial Chamber of the Court of First Instance.

102. In relation to each exception and limitation, please indicate:

(i) the source of law (statutory law and/or the case law) by providing the relevant provision(s) and/or a brief summary of the relevant decision(s):

For compulsory licenses the provision is Article 61 and for ex officio licenses it is Article 75 of the same Law No. 50/AN/09/6th L on Industrial Property Protection.

(ii)-(iii)

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

In addition, in relation to each exception and limitation, please explain:

(i)-(ii)

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

103. If other mechanisms for the limitation of patent rights external to the patent system exist in your country (for example, competition law), please list and explain such mechanisms:

No.

[End of Questionnaire]

March 2012