Is your patent being worked?
Patent-holders are not complying with India's law that requires them to work their patents in the country
Ilaws incorporate some unique features INDIA'S PATENT that are in a class of their own.One such is Section 3d, the of Big Pharma,which has inspired other countries to emulate it.This provision prohibits the patenting of a new form of a known molecule.Reams have been written on it and a number of cases have been filed against it, but unsuccessfully. Then, there are those sections which allow compulsory licences (CLs) to be issued to Indian companies to override patents that are not being worked in India or in situations where vital medicines are not available to patients. CLs are used worldwide but some features of Sections 83 and 84 are certainly unique to India.
Now,the spotlight is on a less discussed but critical aspect of the law that is embodied in Form 27. Section 146(2) of the Patents Act read with Rule 131 of the Patent Rules makes it mandatory for every patentee and their licensee to make an annual disclosure on how they are working their patent commercially. It seeks full disclosure with details of the quantum and value of the working of the patented product. The format for this mandatory disclosure is Form 27.Patentees,however,have been taking Form 27 lightly and,shockingly,India’s Patent Office had been turning a Nelson’s eye on this violation.
Matters are now set to change. On September 1, the Delhi High Court admitted a Public Interest Litigation (pil) filed by legal scholar Shamnad Basheer,who formerly taught at the National University of Juridical Sciences (nujs),Kolkata.He has sought the strict implementation of the filing of the “working statement” in respect of all patents granted in India. As far as I could make out, this requirement is not sought by any other country.The court has given the government till November 17 to respond.
The pil is based on a study conducted by Basheer on the working of patents granted in three sectors: pharmaceuticals (specifically life-saving drugs), telecommunication and inventions emanating from public fund- ed research institutions. Through hard-won Right to Information (rti) applications,the nujs professor found that about 35 per cent of the patentees had failed to disclose the working status of their patents during 2009-12. Worse, the Form 27s filed by these companies were incomplete,defective or plain gobbledygook,although failure to file the statement or providing incorrect information invites penalty of lakh.
The petition says government inaction is egregious because “the blatant non-compliance” was brought to its notice four years ago through a similar investigation conducted by Basheer in a public report.
The Patent Office’s failure to strictly enforce Form 27 has a more serious fallout: it hampers the right of those entities which wish to apply for CLs based on the working status of the patent. One case illustrates the importance of the working of patent statement. When a small Hyderabad-based company sought a CL on an mnc drug, it showed that the latter was not working the patent in the country and even imports were of a limited quantity.
The fact is most mncs,specially those in pharma,have very little or no manufacturing capacity in India.The petition says the statutory disclosure on the working of patents is intended to foster transparency in the patent innovation ecosystem because Big Pharma and high-tech telecom companies are opposing this by citing trade secrecy concerns on their markets for specific products.
There is a significant issue at stake here. While patent rights serve as an incentive for developing new technologies and products by providing monopoly control over the newly created goods, innovations are expected to benefit society at large. The argument is that while innovators should, indeed, be rewarded, patents must be seen as tools for development that enrich society through the widest possible availability of goods,services and technologies.
RITIKA BOHRA / CSE