Roche vs Cipla: Is the Roche-OSI/Pfizer Licence Registered in India?


One of my friends drew my attention to sections 68 and 69 of the Indian Patents Act, and asked a few perplexing queries. At the end of which, it occured to me that these very same provisions might have implications for the Roche vs Cipla case, that is now being adjudicated upon by an appellate bench of the Delhi High Court. For our previous posts on this issue, see here.

The net result of sections 68 and 69 is that unless a license/assignment or any other interest in a patent (mortgage etc) is “in writing” and “registered” in the register maintained by the Controller of Patents, it is not valid. Section 69 (5) however provides that in some cases, the court/controller may (after giving its reasons in writing) admit a “non recorded” patent license/assignment.

So how does this impact the Roche vs Cipla case?

The patent in suit is jointly owned by OSI Pharma Inc and Pfizer Products Inc. It is licensed for use/sale etc to Roche (the main defendant in the case). What if this license agreement is not recorded under section 69? Clearly, unless the court otherwise directs, Roche’s interest in the patent is not valid and it cannot bring the law suit against Cipla. Rather the suit will have to be taken over by OSI/Pfizer Products. I’m guessing that the license was duly recorded under section 69–else Cipla’s counsel would have certainly raised this issue.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

6 comments.

  1. AvatarAnonymous

    Dear Shamnad
    At last you take a right point. Infact I am surprised for last couple of months no body is bother about the fact of license agreement .Well i want to increase one point in this issue that all of these information are registered and it should in written form and any one can inspect that register .
    regards
    Anon

    Reply
  2. AvatarShamnad Basheer

    Praveen Raj writes:

    “Dear Shamnad,

    please observe the amendments made in Section 68 by the amendment in 2005. It reflects that the license/assignment is valid even if not registered with the Controller.

    So Section 69 (5) may help as registration is not mandated under Section 68

    But Section 68 and Section 69 contravenes in respect of its provisions. No doubt

    Regards,
    R.S. Praveen Raj”

    Reply
  3. AvatarShamnad Basheer

    Thanks for your comment Praveen:

    But registration is mandated under section 69, is it not? And the only way you can be excused is by a specific direction of the court/controller. In other words, “registration” is the norm. and an exemption from registration by a court/controller is the exception.

    shamnad

    Reply
  4. AvatarAnonymous

    Dear Shamnad,

    In my observation of the last few years, very few patent license agreements are registered with the IPO; unlike TM license agreements that are registered more often.

    I am not sure of the reasons behind the practise.

    Regards,

    Reply
  5. AvatarShamnad Basheer

    Dear Praveen,

    I just received an email from Feroz Ali regarding this issue and he pointed me to his book section which deals with this issue. Since the 6 month time period has been removed, a license may be registered at any time. However, if the matter reaches litigation, then unless the court permits, one cannot run to the patent office and have this recorded. Unless teh court grants the permission to do so (69.5)–and the court is very unlikely to withhold permission on grounds of this technicality. I think Feroz is absolutely right here. So you are right in a way–that for all practical purposes, this need to record may not prove fatal in IP litigations.

    Reply

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