Patent

Patent Working PIL (Update): Govt To Frame Rules To Prosecute Errant Patentees


Continuing our updates on the patent working PIL, here is what transpired in court today (bench comprising Justice Gita Mittal and Justice Hari Shankar) .

A number of leading counsels including Sandeep Sethi, Rajiv Nayyar, Pravin Anand, Chander Lall etc showed up for a number of parties that wished to intervene in the matter (such as Ericsson etc). Ericsson and Natco had filed applications for intervention at the last date of hearing (18th Feb) and I will carry a separate update on this later. For now, its reassuring to see that a number of MNC’s and other corporates are finally taking the patent working requirement seriously. Readers may recall that we started this campaign in 2011 (tracking errant Form 27 filings since 2008!).

At todays’ hearing, my counsel Abhimanyu Bhandari (assisted by Sai Vinod) stressed yet again that, in all these years, the patent working mandate had never been taken seriously. Unless there was some threat of sanction, a large number of patentees would continue ignoring this important statutory mandate. However, he also made it clear that it was not our intention was to simply trigger  prosecution against errant patentees. Rather, we suggested that patentees who had failed to comply with this mandate (in full or in part) in the previous years be offered a last “cut off date” within which to comply. And that action should be taken only against those that still didn’t comply within the required cut off date.

The government counsel Amit Mahajan agreed broadly with our contention that the patent working (disclosure) mandate had not been enforced against errant patentees. However, he noted that until there was a legal framework in place for initiating prosecution against errant patentees, the hands of the patent office were tied. The statute (Section 122) simply provides that errant patentees may be fined (upto Rs 10 lakhs) and in some circumstances even imprisoned (where they deliberately provide wrong Form 27 information).

However, for these penalties to take effect, one needs to have a more specific framework, which is usually done through patent rules…which would spell out as to which official from the patent office could file the formal criminal complaint with the magistrate having jurisdiction etc.

The court therefore asked Mr Mahajan to file an affidavit in court the day after tomorrow (7th Feb) listing out the various steps and the timelines for putting a robust enforcement framework in place for prosecuting errant patentees.

Kudos again to Mr Mahajan for constituting that rare breed of progressive government counsels who are able to appreciate the larger public interest; and not see this as an adversarial issue to be contested at any cost!  But rather as one in which we are all engaged as collaborative stakeholders to help build a more robust and transparent patent/innovation ecosystem. We need more like him!

Light at the End of the Tunnel:

After a hiatus of more than seven years (we started this campaign through blog posts and media reports in 2011), we’re finally seeing some light at the end of the patent working tunnel. Thanks to a wonderful bench at the Delhi high court and a government that is now taking this patent working requirement seriously. As I note in this recent piece in the “Pulse” (the health supplement of the Hindus Business line, put together by a team led by the wonderful Jyothi Datta):

“Patent working disclosure also serves as a necessary quid pro quo for the 20-year monopoly granted to the patentee; in helping assess whether or not the patentee has served the larger public interest through the patent. And it is here that the Indian patent system scores over the allegedly more advanced patent systems of the United States and European Union.”

We must therefore do all we can to ensure that this provision is not whittled away or diluted through coercive trade pressures exerted by the US or EU.

ps: Image from here.

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.

2 comments.

  1. K S N Murthy

    One Suggestion Professor. Why not suggest that in the case of non working of a patent for a specified period may be three to five years, Compulsory Licensing provisions will be attracted and the patent holder should not be able to oppose the same. Instead of a monetary penalty this sort of a requirement will at least result in the patent working. The interest of the all the stakeholders is in the working of patent rather than on collection of penalties.

    Reply
    1. Shamnad BasheerShamnad Basheer Post author

      Dear Mr Murthy. CL for non working already exists as a ground. Form 27s help demonstrate whether the patent has been worked or not. But even if Form 27 has not been filed, a patentee could still independently show that the patent has been worked.

      Reply

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