January 17, 2018     

India: Delhi High Court states that Patent Working Information is not ‘Confidential’

Delhi-High-Court.jpg

Source: www.delhihighcourt.nic.in

 

Background

 

‘Commercial working statement’ is the information submitted about the working or non-working of granted Patents by a Patentee or a licensee to the Indian Patent Office by making a request on Form 27. This is required to be submitted with the Indian Patent Office within 3 months from the end of every year that is before March 31 of every year or when the Controller issues a notice regarding submission of such information. Recently, a writ petition was filed by Prof. Shamnad Basheer (hereinafter referred to as the ‘Petitioner’) wherein he pointed out that many Patentees and Licensees have not submitted the commercial working statement and no action has been taken against them as per Section 122 of the Indian Patents Act, 1970 (hereinafter referred to as the ‘Act’).

 

Petitioner’s Submission

 

The Petitioner highlighted many instances where there was a failure to comply with the submission of a working statement by the Patentees or licensees. These are:

  • As reported in the Annual Report for the year 2012-2013 submitted by the Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications, ‘there were totally 43920 patent issued during that period, but the commercial working statement on Form 27 was submitted only in 27946 cases and moreover, only in 6201 cases the statement was recorded as working’. It sought information from the Union of India (hereinafter referred to as the ‘Respondents’) regarding the actions that have been taken against the Patentees/Licensees for not submitted Form 27.

  • It further referred to the case of M/s NATCO Pharma to whom a Compulsory License was granted for the Patent No. 215758 and the order, which granted Compulsory License, imposed an obligation on M/s NATCO Pharma to report the accounts of sales to the Controller on a quarterly basis, on or before the 15th of each succeeding month. It sought information as to whether M/s NATCO Pharma has complied with the order and if not what action has been taken against them.

  • The Court’s attention was further drawn to another statutory noncompliance where the the Petitioner pointed out that Section 146(2) read with Rule 131 also makes it mandatory for a licensee to submit the working statement to which the Controller of Patents and Designs, CPIO responded that “Form-27 are filed by Patentee only”.

  • The Petitioner also pointed out to an instance where Form 27 was submitted by M/s Telefonaktiebolaget LM Ericsson (Pub.) in respect of patent no.203034 where the Patentee mentioned that details of licenses and sub-licenses would be only disclosed on the direction of the Patent Office.

Intervener’s Submission

 

Ms. Pritha Srikumar, Advocate for the intervener, has submitted that the Petitioner has pointed that Form 27 was vague, a relook into the same by the Respondents is necessary, and hence, non-compliance of submitting Form 27 cannot be faulted with.

 

Court’s Observation

  • The Court held that the response of “Form-27 are filed by Patentee only“ by Controller of Patents and Designs, CPIO is contrary to statutory requirement as per Section 146 of the Act.

  • With regard to the Form 27, submitted by M/s Telefonaktiebolaget LM Ericsson (Pub.), the Court stated that the Patentees/Licensee are required to furnish details of the licenses and sub-licenses. Further, it held that these information cannot be termed “confidential” and therefore, the Patent Office has to take action against Patentees/Licensees who do not furnish the required information for submitting Form 27.

  • The Court held the submission of Ms. Pritha Srikumar to be erroneous and stated that there can be no exemption from statutory provision and the Patentee/licensee who submits the same with the Patent Office should clarify any problem relating to Form 27. About having a relook into submission of Form 27, the Court observed that the Respondents have submitted in their counter affidavit that public comments were invited for the amendment to Form 27.

  • The Court further stated that the writ petition by the Petitioner has remained pending with the Court since 2015. Also, they do not have any information as to whether there is any change in the status with regard to the submission of working statement under Section 146 of the Patents Act, 1970 and whether any action is taken by the Controller General of Patents and Designs under Section 122 of the Act against Patentees/Licensees who are not complying with the submission of commercial working statement.

Further, Mr. Amit Mahajan, the Learned Central Government Standing Counsel (hereinafter referred to as the ‘CGSC’), prayed for an adjournment with regard to information about the status of any amendment to the rules and action taken under Section 122 of the Indian Patents Act for non-compliance in submission of working statement. Therefore, the Court granted time to CGSC and the matter will be next heard on January 18.

 

Conclusion

 

Submission of working statement by making a request on Form 27 is mandatory and is required to be submitted by Patentees/Licensees without hiding any information as confidential. Any failure to comply with the submission of Form 27 would lead to imprisonment or a fine or both as per Section 122 of the Indian Patents Act.

 

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