Title: Examining the legality of abuse by failure to manufacture patents locally as a substantive condition for granting compulsory licences pursuant to the TRIPS Agreement

Authors: Thaddeus Manu

Addresses: Centre for Trade, Intellectual Property and Competition, Plot 14, 13th Street, Bebre, P.O. Box SN 605, Santasi-Kumasi, Ghana

Abstract: This article assesses whether abuse by failure to manufacture patents locally remains a valid condition for granting compulsory licences under TRIPS. The author examines Article 27(1) of TRIPS, which stipulates that patent rights shall be enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced, and Article 5(A)(2) of the Paris Convention, which recognises failure to manufacture locally as an example of the abuse of patent rights, and argues that the former is incorporated into Article 2 of TRIPS, thus validating the same as a condition for granting compulsory licences under TRIPS. This argument rests on the notion that India has used Section 84(1) of its TRIPS-compliant Patent Act, related to a requirement that patented inventions be manufactured locally, as a condition for granting a compulsory licence to Natco, and this decision remains unchallenged within the WTO DSU system.

Keywords: abuse; compulsory licensing; failure to manufacture; intellectual property rights; patents; Paris Convention; TRIPS Agreement.

DOI: 10.1504/IJIPM.2021.114596

International Journal of Intellectual Property Management, 2021 Vol.11 No.2, pp.95 - 135

Accepted: 19 Oct 2019
Published online: 06 Apr 2021 *

Full-text access for editors Access for subscribers Purchase this article Comment on this article