Compulsory licensing in Bosnia and Herzegovina

The legislation of Bosnia and Herzegovina (“BiH”) does not expressly define the compulsory licence.

However, under the Patent Law of Bosnia and Herzegovina, if the right holder refuses to assign the right to the economic exploitation of a protected  invention  in  BiH or  imposes  unreasonable conditions for such assignment without having made effective and serious preparations for the exploitation thereof in BiH, the Court of BiH may grant a compulsory licence at the request of an interested party. Additionally, the Council of Ministers of BiH may grant a compulsory licence if the exploitation of the invention protected by a patent is necessary for the benefit of national emergencies as prescribed by the competent law.

In relation to the Law on Protection of New Plant Varieties in BiH, the Administration of Bosnia and Herzegovina for Plant Health Protection, based on the request of an interested party, may grant a compulsory licence when the usage of breeding rights is in the public interest.

• Patent Law (2010);
• Law on Protection of New Plant Varieties in BiH (2010, 2013) (”LPNPV”);
• Rulebook on the procedure for awarding a patent and consensual patent (2010, 2016).

Under the Patent Law, compulsory licensing applies to a protected invention in Bosnia and Herzegovina, without specifying the products or technologies.

The LPNPV does not specify the products or technologies to which the compulsory licence applies.   

3.1 Has any compulsory licence ever been issued in your jurisdiction? If yes, on what type of technology? 

No.

Any person, both legal and natural, can apply for a compulsory licence upon fulfilling the conditions (i.e. as a party with interest for obtaining such right). In regard to foreign persons, they also can apply for the subject licence. However, they may perform its activities only through the representative (i.e. natural persons and legal entities registered in the Register of Patent Representatives before the BiH’s Institute for Intellectual Property or respectively in the Register of Representatives before the Administration of Bosnia and Herzegovina for Plant Health Protection). 

Patent Law

If the right holder refuses to grant the right of usage of protected invention or imposes unreasonable conditions without effective and serious preparations for the exploitation thereof in BiH, an interested party requesting the compulsory licence, upon expiration of the four-year period from the filing date of a patent application or after the expiration of the three-year time limit from the date of granting a patent, whichever of these two time periods expires later if unsuccessfully attempted, within a reasonable period of time, to obtain authorisation from the patent holder for the exploitation of the protected invention on reasonable commercial terms and conditions, can submit a request for granting a compulsory licence. However, the compulsory licence may not be granted if the patent holder proves the existence of legitimate reasons justifying non-exploitation or insufficient exploitation of the protected invention.

Furthermore, the compulsory licence may be grant for somebody else’s patent to the patent holder who cannot exploit his protected invention without infringing someone else’s patent, provided that:

1. a patent held by the person filing the request for a compulsory licence, in addition to fulfilling the condition stated in above paragraph, involves an important technological advance, which is of considerable economic significance in relation to the invention protected by the patent for which the grant of a compulsory licence is requested; and
2. the holder of the patent for which the grant of a compulsory licence is requested is entitled to a cross licence on reasonable terms and conditions.

In addition to the above conditions, the Council of Ministers of BiH may grant a compulsory licence if the exploitation of the invention protected by a patent is necessary due to national emergencies for the purpose of:

1. state security;
2. protection of public interest in the field of health and nutrition;
3. protection and improvement of human environment;
4. special interest in a particular branch of economy or where it is necessary to correct practices determined in a judicial or administrative process to be uncompetitive.

LPNPV

The compulsory licence can be granted when the usage of the breeding right is in the public interest if the interested party prove that he has at his disposal the reproductive material, professional, production-technical and financial conditions for complete usage of the breeding right.

6.1 Any negotiation required between the applicant and the right holder before applying for a compulsory licence? 

Yes. A compulsory licence under the Patent Law may be granted only if the person filing the request for a compulsory licence unsuccessfully attempted, within a reasonable period of time, to obtain authorisation from the patent holder for the exploitation of the protected invention on reasonable commercial terms and conditions. 

Under the LPNPV, the obligation of a negotiation between the applicant and the right holder is not specified.  

6.2 Any urgent situation required in order to grant a compulsory licence?

The urgent situation is not expressly prescribed under the Patent Law. However, the Council of Ministers of BiH may grant a compulsory licence, if the exploitation of the invention protected by a patent is necessary for the benefit of national emergencies in the prescribed cases.

The LPNPV does not specify the matter relating to any urgent situation required in order to grant a compulsory licence.

6.3 Any minimum number of years required for the patent to be granted and/or implemented in order to be subject to compulsory licensing?

For a patent to be subject to compulsory licensing, the request for such a compulsory licence may be filed after the expiration of the four-year period from the filing date of a patent application or after the expiration of the three-year time limit from the date of the grant of a patent, whichever of these two time periods expires later.  

Under the LPNPV, for a breeding right to be subject to a compulsory licence, an interested party can submit a request for such a compulsory licence only after expiration of the five years period from the acquisition of the breeding right.

The limits on the number of compulsory licensees are not specified under the Patent Law or LPNPV.  

Under the Patent Law, a compulsory licence may not be exclusive, and the scope and duration thereof shall be related exclusively to the purpose for which it was granted.

Additionally, the compulsory licence shall be authorised primarily for the purpose of supply in the domestic market, unless it is necessary to correct practices determined in a judicial or administrative process to be uncompetitive.

In the case of semi-conductor technology, a compulsory licence may be granted only in case of national emergencies (i.e. in the public interest).

In relation to the LPNPV, the compulsory licence shall be granted for a period of three years, with the possibility of an extension if it is determined that there are conditions for its re-acquisition.

Under the Patent Law, the Court of Bosnia and Herzegovina has the competency in procedure of granting a compulsory licence. Exceptionally, in the case of granting a compulsory licence due to public interest, (i.e. a national emergency), the Council of Ministers of BiH shall be the competent authority.

Under the LPNPV, the Administration of Bosnia and Herzegovina for Plant Health Protection has competence over granting a compulsory licence.

Under the Patent Law and LPNPV, an interested party who requests that a compulsory licence to be granted must submit a request for the same to the competent authority.

10.1 What materials need to be submitted to the competent authority?

Materials needed to be submitted to the competent authority for granting a compulsory licence are not expressly specified by the Patent Law or LPNPV.

However, under the Rulebook on the procedure for awarding a patent and consensual patent, the following information/documents are required to change the entry in the patent registry (i.e. applicable to the registration of a licence):

• an explicit indication that a change in the registry is requested;
• number of the patent application or patent;
• information on the requester (last name, first name and residence of the natural person, or company name and registered seat of the legal entity, unique identification number of natural persons or identification number of the legal entity);
• information on the applicant (i.e. patent holder, last name, first name and residence of natural person, or company name and registered seat of the legal entity);
• signature of the requester or a representative;
• indication on the type of subject change;
• proof of legal basis in relation to change for which the registration is requested (contract, public document, statement) if there has been a change in the person who is the applicant and the patent holder;
• proper power of attorney if the procedure for changes is initiated through a representative.

10.2 How long will it take to get a compulsory licence?

The period for obtaining the compulsory licence is not specified under the Patent Law or LPNPV, nor is any information from the case law available as no compulsory licence has been issued.

BiH’s legislation does not expressly prescribe the urgent situation in relation to the compulsory licence.

However, under the Patent Law, the Council of Ministers of BiH may grant a compulsory licence if the exploitation of an invention protected by a patent is necessary for the benefit of national emergencies in prescribed cases, and such a situation is not subject of prior negotiations with the patent holder.

Compulsory licence can be terminated automatically if the time period for which it was granted expires.

12.1 What are the conditions for the revocation/termination of a compulsory licence? 

In addition to the condition outlined under item a., under the Patent Law the compulsory licence can be cancelled by the competent authority based on the reasoned request of an interested party if and when the circumstances which led to the authorisation thereof cease to exist and are unlikely to recur, but provided that the legitimate rights of the licensee are protected.

Under the LPNPV, the matter regarding the revocation/termination of a compulsory licence, in addition to item a. above, is not expressly specified.

12.2 How should products made under a compulsory licence be treated if the compulsory licence is terminated/revoked?

The matter treating the products made under a compulsory licence if such is terminated/revoked is not specified under the Patent Law or LPNPV.

No.

13.1 If the compulsory licensee is required to pay a royalty, how is the amount of royalty determined and who will decide the amount of the royalty?

The patent holder shall be entitled to remuneration taking into account the economic value of a licence and the need for correcting uncompetitive practices. The Patent Law does not specify who will determine the amount of the royalty.

Under the LPNPV, the holder of a compulsory licence has the obligation to pay a fair fee to the holder of the breeding right determined by an agreement of both parties, and if no agreement is reached, the amount of the fee and the method of payment shall be determined by the competent court.

13.2 Is there any remuneration available for the right holders other than royalty?

The matter relating to any additional remuneration other than royalty is not specified under the Patent Law or LPNPV.

This is not expressly specified under the Patent Law or LPNPV, but discretionary remedies may be issued depending on the competent authority.

Not specified under the Patent Law or LPNPV.

The provisions regarding the obligation of confidentiality are not specified under the Patent Law or LPNPV.

 A compulsory licence shall be authorised primarily for the purpose of supply in domestic market, unless it is necessary to correct the practices determined in a judicial or administrative process to be uncompetitive.

Export of products under compulsory licences is not specified under the LPNPV.

17.1 If the compulsory licensee is permitted to export products under the compulsory licence, are there any requirements and limitations on the export of such products?

Regarding the permit to export products and its potential limitations under the compulsory licence, this matter is not specified under the Patent Law or LPNPV.

No.

Generally, such a situation is possible.

Under the Patent Law, the Council of Ministers of BiH may grant a compulsory licence if the exploitation of the invention protected by a patent is necessary due to national emergencies for the purpose of:

1. state security;
2. protection of the public interest in the field of health and nutrition;
3. protection and improvement of the human environment;
4. special interest in a particular branch of the economy or where it is necessary to correct practices determined in a judicial or administrative process to be uncompetitive.

In this case, the provisions regarding the obligation of prior negotiations with the patent holder shall not apply.

Moreover, under the LPNPV, the Administration of Bosnia and Herzegovina for Plant Health Protection may grant the compulsory licence when the usage of breeding rights is in the public interest and upon fulfilling the prescribed requirements.

No.

In relation to the transfer of a compulsory licence under the Patent Law, the same may be transferred only together with the production plant or the part thereof in which the invention for which it was granted is exploited.

If the compulsory licence is granted based on the dependable patent (i.e. if the patent holder cannot exploit his protected invention without infringing somebody else’s patent as described under the question no. 5 above), the licence is not transferrable, except in the case of simultaneous transfer of the patent for which it was granted.

Under the LPNPV, transfer or assignment of a compulsory licence is not specified.

The impact of the issuance of a compulsory licence on the previously agreed licence is not specified under the Patent Law or LPNPV.

The matter relating to the special labelling requirement for the products made under the compulsory licence is not specified under the Patent Law or LPNPV.

Under the Patent Law, a compulsory licence shall be authorised primarily for the purpose of supply in the domestic market, unless it is necessary to correct the practices determined in a judicial or administrative process to be uncompetitive.

In relation to LPNPV, the special distribution channel requirement for the products made under the compulsory licence is not specified.

There is no price requirement for the products made under the compulsory licence specified under the Patent Law or LPNPV.