Innovation Patent

Form 27 and Draft Patent (Amendment) Rules, 2015


Introduction

ProfessionalCirclesI had earlier covered Shamnad Basheer v. Union of India where the petitioner highlighted the failure to enforce statutory provisions relating to the disclosure as to how patentees have worked their inventions. This is a unique provision in the Indian Patents Act, 1970 (section 146(2)), and year after year, patentees are mandated to submit information (through Form 27) on the extent to which they’ve worked their patent i.e converted it to an innovative product and supplied the product to the market in a manner that satisfies the reasonable requirements of the public. The information provided by Form 27 is required to examine whether the patented invention is satisfying the reasonable requirements of the public.  This information is pertinent for examining the necessity for invoking compulsory licensing provisions and revocation provisions.

The GoI has now released the Draft Patent (Amendment) Rules, 2015 wherein hardly any of the defects in the extant Form 27 have been addressed. Content wise, the draft Form 27 is different only in the following aspects: a) it asks whether the licensee is exclusive or not; and b) it asks for details of products commercialized by utilizing the patent. [Gopika covered the development here.]

The Draft Patent Rules, 2015, as far as Form 27 is concerned, is a complete disappointment. The Writ Petition highlighted all the defects in Form 27. Evidently, the Writ Petition has been overlooked. 

At this juncture, I would like to take a closer look at “professionalism” from the perspective of institutional ethics. Just like “integrity” (which I discussed in an earlier post), “professionalism” is a pregnant term which engrains crystallized principles. In a benign sense, it is an internalized duty to do well. It is a kind of performance ethic, close to a noble calling, by which professionals simply are called to do their best, for anything less would be embarrassing to them. It is an ingrained pride in performance. In other words, professionalism is adherence to a set of normative and behavioural expectations usually embodied in a code of ethics. Well, how professionally made is the draft Indian Patent Rules, 2015? It is for you to decide after reading this post…

As to help you decide, I shall now briefly discuss the defects in the extant Form – 27. I shall be relying on the Writ Petition which had brought this out well. I suggest this Writ Petition to anyone who is interested in knowing more about the whole issue. It is a quality output. You will not be disappointed if you invest your time in reading it. 

Defects in Form 27

a) Vague wording

Form 27 requires patentees and licenees to “give whatever details are available” without mandating such disclosure in stronger terms, given that it is a statutory mandate under section 146 (to disclose the full extent of commercial working of the patent). Naturally, as the Writ Petition rightly argues, “the patentees and licensees had taken advantage of this ‘loose’ provision and provided virtually insignificant, incomplete information.”

b) Insufficient information pertaining to working of patent

Form 27 requires the following information:  “If worked: quantum and value (in Rupees), of the patented product:

i) manufactured in India.

ii) imported from other countries. (give country wise details)”

Form 27 exudes ignorance of working of pharmaceutical industry. As the Writ Petition rightly notes, “When it comes to patented drugs, for instance, it is necessary to know the required dosage per patient to effectively assess as to how many patients are being served through the supply of the patented product. This aspect was critical factor in the grant of first compulsory licence in relation to Nexavar®. Both the Controller of Patents that decided to grant this licence at the first instance and the appellate authorities (IPAB and Mumbai High Court) that upheld the grant of this licence had to determine the total number of patients requiring the drug as against the total number of patients actually receiving the drug from Bayer’s sales in the market.”

c) Vague requirement on disclosing licensing information

Form 27 requires patentees to disclose “whatever details are available: the licences and sub-licences granted during the year.” Again, as a natural outcome, this vagueness is (intentionally or not) misused. As to examine the working of patent, it is pertinent to know whether the patent has been licensed in the first place, names of licencees, the broad terms of licence etc.

d) Reasonable requirements

The FORM-27 declaration merely requires patentees to state whether or not the reasonable requirement of the invention to the public have been met. The Writ Petition rightly argues that “….this vague and broad question is non-sensical, since it is likely to be met with only one standard response from all patentees, namely that they are satisfying the reasonable requirements of the public. One is hard pressed to think of any patentee that would state otherwise, and our FORM-27 investigations do not disclose a single filing that states so. Rather than merely asking the patentee to self attest whether or not it believes it is satisfying the reasonable requirements of the public, the FORM-27 declaration ought to call for more particular information as would help make this assessment. In particular, the patentee ought to be asked to submit the following:

i) estimated demand of the patented invention or product;

ii) extent to which the demand has been met (i.e., availability);

iii) details of any special schemes or steps undertaken by the patentee to satisfy the demand.”

Further, Form – 27 should mandatorily capture a) the potential manifestations of the patent; and b) related multiple patents covering the same product (which are common in telecom industry). Knowledge of related patents and potential manifestations of the patent is crucial for de-bottlenecking especially when patents go haywire. Ideally, patent should not be a ‘sword’ against innovation. But when it does, it is imperative that the regulator puts its feet down. In the absence of requisite information such as the ones mentioned above, the regulator obviously cannot effectively play its role.

So, how professionally made is the draft Indian Patent Rules, 2015? It is for you to decide…Personally speaking, I hope this post draws the attention of Mr. Amitabh Kant, Secretary, DIPP, who is considered to be one among the most efficient IAS officers in the country. 

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

9 comments.

  1. AvatarO Nomos

    “The Writ Petition highlighted all the defects in Form 27. Evidently, the Writ Petition has been overlooked.”

    Of course the writ Petition has been overlooked. What did you expect?
    The matter raised (though pertinent and commendable) is sub judice.
    W.P.(C) 5590/2015; The latest order (dated 27.05.2015) on the Delhi HC website as on this day reads thus.
    “The learned senior counsel appearing for the petitioner seeks time to file additional affidavit furnishing better particulars to substantiate the contentions in the writ petition. The same be filed within four weeks from today.”

    http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=122754&yr=2015

    It would be naive if not downright arrogant to expect the DIPP to take cognizance of a Writ Petition which is yet to be adjudicated on merit.

    Reply
    1. Mathews P. GeorgeMathews P. George Post author

      U mean to say that dipp is precluded from taking note of the defects highlighted in the writ petition? If that’s what u r saying, I don’t intend to respond to your comment.

      best wishes.

      Reply
  2. AvatarUtsab Banerjee

    Congrats Mathews for this article. I would like to state to Nomos, that yes DIPP is not bound to take cognizance of a Writ, but when certain amendments are being made to rules of a highly debated legislation, proper background research is a must. Do you suggest that the points mentioned here regarding Form 27 are baseless? If we dream to have a patent system comparable to the developed countries then the bureaucracy needs to rise above their age old protocols. There is dedicated law school of IP in IIT Kharagpur. Did DIPP even consult them before publishing the amendments?

    Reply
    1. AvatarO Nomos

      It was never my case that the DIPP is precluded from taking cognizance of the Writ. Neither is it my case that the issues highlighted are baseless. The writ is a commendable step in the right direction. I take objection to the manner in which the reportage is made. My comment was in context of the statement “Evidently, the Writ Petition has been overlooked”.
      We’d pray for a more proactive bureaucracy but the fact of the matter is that there are numerous Writs being filed in the country by stake holders with possibly conflicting views and pleadings.
      I’m saying it unreasonable to expect the authorities to keep track of Writes being filed. They are already over burdened and understaffed (you could argue that too is their fault, which perhaps it is). I can’t think of any office in the country which tracks sub judice Writs and to expect the DIPP to do it and to then go further to attribute intentions and indulge in name calling is all the more uncalled for and unreasonable.

      Funnily enough, the assertion that the Writ was overlooked stands on flimsy ground at best! The defect as raised in Para 63(1) is addressed by the DIPP in the draft Form 27. The draft Form 27 does away with “give whatever details are available”; a fact that was conveniently left out in the instant piece.

      Yes there are issues. Yes they need addressing. There is a forum available to raise the issues, which you have. Let things proceed and convey your grievances there instead of making derogatory sweeping remarks.

      @Utsab: In my humble opinion, taking inputs from the industry makes much more sense than taking inputs from a Law school or even a blog for that matter. Academic inputs are valuable but Rules are best understood and critiqued by those who practice them day in and day out.

      Reply
      1. Mathews P. GeorgeMathews P. George Post author

        Dear Nomos

        Candidly speaking, I dont see your comment worthy of responding. It will be beneath my dignity to respond to such comments. Having said that, I would like to point out four things: firstly, I talked about professionalism. I didnt impute motives for lack of evidence in my hand. Secondly, I hoped that this post would get the attention of Mr. Amitabh Kant whom I respect a lot. There is no “name calling” as such.

        Thirdly, what do you mean by derogatory sweeping remarks? Its your language which is derogatory. I talked about issues. You are not talking about issues that I raised.

        Fourthly, I can only extend my sympathies to you here – “Funnily enough, the assertion that the Writ was overlooked stands on flimsy ground at best! The defect as raised in Para 63(1) is addressed by the DIPP in the draft Form 27. The draft Form 27 does away with “give whatever details are available”; a fact that was conveniently left out in the instant piece.” –

        As you are an “enlightened” person, when do you wan the DIPP to take note of the defects highlighted in the Writ Petition? I guess, you wan them to revise the extant Form 27 after a verdict has been given…..thats in 1-2 years, i guess..great…again, my sympathies…

        Reply
  3. AvatarAnonymous

    Form 27 requires more clarifications. For example, if a product contains two or more components (A, B, C………) and the patent only covers component A, the value in terms of money should be given for component A or for the product?

    Reply
  4. AvatarbPk

    So basically, the activists/non-practitioners (read who have never even seen the face of Court of Patent Office, forget defending a Patent at any fora at all) want all the commercial and probably even confidential business information to be disclosed by way of Form 27. And contemplating further, just because one particular information was not filed, then make it a ground for seeking revocation of the Patent, which otherwise stands firm on all its legs.

    I am not a favouring any side, nor I am blaming anyone, but at some point, practicality has to be understood.

    p.s. I would request the readers and such parties having concern to please visit the Patent Office during the days when the Form-27 deadlines (ideally March last week) approach and see the heap of Form-27s lying there and then just imagine the same multiplied by few times for the reason of the details an ideal Form-27 would have along with probably the annexures supporting the declarations that are made there.

    #nooffence #withduerespect

    Reply

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