Patent Office finally takes Form 27s seriously


The Patent Office issued a public notice yesterday (i.e. February 12, 2013) directing all patentees and license holders to submit Form 27 applications for each calendar year by end of March for the previous year. The notice draws attention to Section 122(1)(b) which after the 2005 amendment allows for imposition of fine up to to 10 lakhs for non-submission. The notice can be accessed here. A similar notice was issued on December 24, 2009 by the then Controller P.H. Kurian directing patentees and licensees to submit their Form 27 statements for 2009 by March 31, 2010. 
For those uninitiated, Section 146(2) of the Patents Act, 1970 requires patentees and licensees to submit a statement on commercial working of the invention to the Controller every year. This information is critical for grant of compulsory licenses under Section 84. Readers would recollect an RTI investigation that we conducted along with P-PIL in 2011 which revealed that pharmaceutical companies have largely ignored filing Form 27 statements. Not sure what exactly sparked off the IPO to come with the notice this time, but this definitely falls in place when the government is seriously considering the CL route with respect to cancer drugs. 
Needless to elaborate, the touchstone for information sought under Form 27 is the provision on grant of compulsory license under Section 84(1). In other words, the information must assist in deciphering: 
(a) whether the patentee is able to satisfy the reasonable requirement of the public?
(b) whether the patentee is able to sell the invention at a reasonably affordable price? and
(c) whether the patentee is working the invention within the Indian territory? 
The big question is whether Form 27 in its present form is serving the intended purpose? We would love to hear any changes or improvements to Form 27 that our readers might want to suggest to the Patent Office. 
Relevant portion of Form 27 is reproduced below: 
(i)   The patented invention: {        } Worked {        } Not worked 

     (a)  If not worked: reasons for not working and steps being taken for working of the invention. 
      (b)  If worked: quantum and value (in Rupees), of the patented product: 
             i)   manufactured in India 
            ii)  imported from other countries (give country wise details) 

(ii)   The licenses and sub-licenses granted during the year; 

(iii) State whether public requirement has been met partly/adequately/to the fullest extent at reasonable price.

3 comments.

  1. AvatarAnonymous

    Sorry to burst the bubble.. but it would be fallacious to link the issuance of this notice with the prospective/move to opening up CL’s for certain anti-cancer drugs.

    This notice used to be sent way back practically on each individual patent.

    The test for the IPO’s seriousness is not in the issuance of the notice, but in the action that would be taken after that. Will the IPO actually take action and impose the penalties that are prescribed for non-compliance? I suspect not.

    As to changes in the Form 27, item (iii) can probably be done away with – it would be difficult for any patentee to state the the level of requirements, and whether their working of the patent meets that requirement.

    Regards,

    Nataraj

    Reply
  2. AvatarSai Vinod

    Hi Nataraj,

    I don’t mean to say that the public notice is a consequence of the proposed move to open CLs on certain anti-cancer drugs. The IPO is (at least) portraying to be serious about Form 27s this time. It would be interesting to see instances where IPO has taken action for non-compliance.

    I completely totally agree with you on item (iii) of the Form. In fact, if you look at some of Form 27s statements here , most of them simply state that ‘Patentee believes that the public requirement is being met adequately.’ And those who have mentioned about any patient assistance programs, haven’t bothered to disclose the extent of the program.

    Sai.

    Reply

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