Opinion of Mr Advocate General Mancini

Mr President,

Members of the Court,

1. The questions formulated by the Hoge Raad der Nederlanden [Supreme Court of the Netherlands] provide the Court with another opportunity to consider one of the most interesting and complex issues of Community law. Essentially the Court is asked to balance the requirements of the free movement of goods against the need to protect the industrial property rights and commercial guarantees provided for in the legal orders of the Member States. There is already a considerable amount of case-law on that subject. This case adds a new dimension to that case-law and care must be taken — and it will not be easy — to ensure that that new element is consistent with the existing principles.

2. In the course of the procedure before the Court of Justice written observations were submitted by the parties in the main proceedings, the Governments of Denmark, the Federal Republic of Germany, France, Italy and the Netherlands, and by the United Kingdom and the Commission of the European Communities. Those observations provide two possible replies to question No 1. They also express the unanimous view that the inclusion of a prohibition on exportation in the conditions of a compulsory licence (question No 2) and the question whether or not the patent proprietor is entitled to royalties (question No 3) are not material to the solution of the problem raised in the first question.

3. Let us consider the arguments which have been advanced in support of those views. Pharmon points out in the first place that the procedure for granting the compulsory licence under the Patents Act entitles the proprietor of the patent to intervene directly in the process of fixing the conditions to which the licence is subject, in particular in relation to the amount of royalties which the licensee must pay to him. As regards Community law, Pharmon then cites the Hag case. In that case too a third party exploited an industrial property right by virtue of an administrative measure (the sequestration of the entire capital of an undertaking) although the original proprietor had not given his consent. The Court considered that the rules relating to the free movement of goods overrode the patent proprietor's rights (judgment of 3 July 1974 in Case 192/73, Van Zuylen v Hag AG [1974] ECR 731). In Pharmon's view, the same principle should be applied in this case. It applies, a fortiori, since in this instance the original proprietor has been divested not of all his rights, as in Hag, but only a part thereof, for which, he received reasonable royalties.

4. Article 36 of the EEC Treaty provides that the provisions of Article 30 to 34 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of... the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.

5. On the basis of the foregoing considerations I propose that the Court should reply to Question No 1 submitted by the Hoge Raad by a judgment of 13 January 1984 as follows:

1 Translated from the Italian.