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Compulsory Licenses, and Revocation of Non-Working Patents

This article discusses the concept of compulsory licenses and the procedure for revocation of Non-working patents under the Patent Act.

By: Muskan Nagdawne (Third Year Law Student at Symbiosis Law School, Pune).

Introduction

Patent-ship of intellectual products refers to providing a technological product, process or invention of such a scientific discovery that is unique. Patents are used to encourage research and development of intellectual property and the same is protected by giving exclusive rights over under the Patents Act, 1970. The said act came to force on 20th April 1972. The guidelines are subsequently designed to follow the metrological standard of international treaties and conventions. 

Theory of Compulsory Licenses

Compulsory licenses in Indian Patent law are simply defined as the process of authorizing or permitting a third party, apart from the original inventor of the said invention, granting to make, use, or sell a patented invention without the patent owner’s consent.

The legislative intent behind this provision is the economic benefits from the same. As more people are legally authorised to make use of products, for instance, pharmaceutical drugs and medicines, more people will be the beneficiary for the same. This method is cost-effective and encourages innovation. Required fulfilment of certain pre-conditions to be eligible to obtain a compulsory licence is also laid down under the Indian Patent Act, 1970, under Sections 84 and 92 of the Act. 

As mentioned in Section 84, after three years from the date of grant of a patent to any person is expired, it is a requirement to make an application for grant of a compulsory licence on three grounds – 

  1. the reasonable requirements of the public have not been satisfied;
  2. the patented invention is not available to the public at an affordable price;
  3.  the patented invention is not worked in the territory of India.

It is upon the personal discretion of the controller upon satisfactory grounds to grant a licence under the patent law. Important aspects to consider in order to make sure that all legal obligations and standards of practice are adhered to include;

  1. the nature of the invention
  2. time gap since the sealing of the patent
  3. advantage it serves to the public
  4. appropriate use and allocation of recourses for the product
  5. the capability of the person seeking a patent to provide working capital
  6. other reasonable terms and conditions

Revocation of patents by the Controller for non-working: Section 85

The Patent Act of 1970 does not explicitly define Nonworking or insufficient working patent. The Act is therefore interpreted to refers to the following term: 

(a) the reasonable requirements of the public with respect to the patented invention have not been satisfied, or 

(b) the patented invention is not available to the public at a reasonably affordable price; 

(c) the patented invention is not worked in the territory of India. When these terms are not fulfilled by the owner, 

I.e. if the patented invention fails in being worked within the Indian territory, on an adequate commercial scale, or whether the patent is not being so worked to the fullest extent that is reasonably practicable. Therefore, if the Controller is satisfied that the time elapsed since the grant of the patent has for any reason been insufficient to enable the invention to be worked on a commercial, he may choose to (by order) adjourn the further hearing of the application. The dissolved period must also not exceed twelve months in the aggregate, to be deemed as insufficient for the invention to be so worked.

Scope of the Section

Section 85(4) states that every application under sub-section (1) shall ordinarily be decided within one year of its being presented to the Controller. Therefore, in case of the grant of compulsory licenses on the grounds of non-working or insufficient working, presently discussed are the series of applicable law provided for revocation of compulsory license due to justification of inaction by the patentee through legitimate reasons.

Compulsory Licenses can also be granted a mechanism for redressal under the situation of Non-working or insufficient working of the patented invention. The non-working of patents is a serious violation of the social duty therefore the law provides statutory protection in these cases. It also encompasses as one of the biggest factors in advancing to patent infringement suits. 

The concepts of affordability, wherein the patentee is the one who is solely responsible for the non-working of the patented production after getting the grant.  An interesting fact is that currently in India only one anti-cancer medication is rightfully patented and the area is also increasing witnessing grant of compulsory license. Due to this, there has also yet to be a legal case for invoking the rights for non-working patents by provisions under Section 85. However, in theory, depending on if the controller is satisfied by the application filed by any interested person to revoke the patent, on the aforementioned ground, the Controller may revoke the patent according to section 85(3).

Procedure mandated by Law

Under Section 87 of the Act, the procedure of revocation under sections Section 84 and 85 shall proceed is defined. An application is submitted under section 84 or 85 and the controller is satisfied that a prima facie case exists to make an order. Further, the applicant is directed to provide copies of the application to the patentee and any other person interested in the patent and the application is published in the official journal. A notice of application is to be intimidated by the patentee or the legal representatives for the same to the controller. A prescribed time limit of 2 months is set, for the notice, commencing from the date of publication of the application. Grounds for the opposition of the application must be laid down clearly.  The opponent must provide and notify the controller with a copy of the opposition notice and evidence. In case of providing for further evidence, the same shall happen by way or leave off or on the requisition of the Controller. For court proceedings, the date and time for the hearing are to be mandated by the controller himself, with a 10-day notice to the parties.

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