The Stakeholder Meeting in relation to the issue of working statements was held on April 6, 2018. The meeting was presided by the Controller General, Mr. O.P. Gupta who was ably assisted by Dr. K.S. Kardam, Mr. B.P. Singh and Dr. Usha Rao. Anand and Anand was represented by Ms. Archana Shanker.
The CG clarified the mandate of the stakeholder meeting which was “revision of Form 27” within the framework of Section 146(2) and Section 122. The meeting was well represented by IP law firms, SME, FICCI, FICPI, Academicians, NGO and industry.
While there were suggestions with regard to having separate form 27 for pharma and non-Pharma patents, majority of the stakeholders were of the view that filing of form 27 is onerous and the consequences for non-compliance is a big deterrent for not filing patents in India.
It was also discussed that From 27 moves on the assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
Several members of the ICT / automobile industry indicated that it was hard and impossible to give this information requested in Form 27 for several reasons such as there is an assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
Anand and Anand made the following recommendations and also submitted Revised Form-27:
That the discrepancies in Form 27 should be removed;
A simple format should be prescribed without compromising the requirements prescribed in the law;
Introduction of IPC classification so as to analyse the working statements (industry wise) and use is as a tool to clear bottlenecks if any and make recommendations to the government;
Confidential information should not be requested and there should be a provision to keep important business information confidential which can be produced on demand under the terms of confidentiality;
As there is a difficultly in accurately determining the value of a patented invention that is incorporated into a product or apportioning a value to a patent incorporated into a product that is covered by multiple patents, the requirement of providing the quantum and price be done away with;
Expressions such as “quantum and value”, “whether public requirement has been met partially, adequately or to the fullest extent” be deleted as these are all subjective test and the patentees are under no obligation to carry out such an analysis for the purpose of form 27;
‘Reasonable price’ is an ambiguous term and therefore should be deleted. What might be reasonable for an innovator company might not be considered as being reasonable for another company. Also over the years, as technology evolves, the value of products drop even though the said product might still be covered by said patent(s);
There should be an option of filing one form 27 for a cluster of patents;
Disclosure of name of licensees should not be mandatory as there are comprehensive/worldwide license agreements including cross license agreements and it may not be possible to provide detailed information as currently required under Form 27.
A patent granted in favor of M/s J. C. Bamford Excavators Ltd. has been revoked by Deputy Controller of patents and Design, Mr. Naveen Mathur in a post grant opposition on the grounds of non-compliance of Section 8 of the Indian Patents Act. The revocation is based on only the formal ground of section 8 and the controller has held the patent to be not only novel but also inventive.
The controller held that the applicant has failed to inform the controller about the Australian application and the Form 3 filed in December 2011 was filed beyond the prescribed period and thus section 8(1) of the Patents Act and the rules have not been complied with.
An interesting fact to note about the decision is that, the same is (1) based only on the pleadings of the parties and (2) has come after the Opponent withdrew the post-grant opposition in view of settlement between parties. The opponent in fact did not attend the hearing appointed in respect of the opposition for final arguments.
A hearing was fixed in respect of the opposition on 07/11/2017. In response to this the opponent sent a letter apprising the controller that there is a decision by the Hon’ble Delhi High Court regarding a pending infringement suit between the parties wherein the parties have come to a settlement. The Patentee attended the hearing but did not argue the matter on merits and only submitted the said Delhi High Court Order.
The controller held that he has been kept in dark and material facts regarding the suit were kept in hiding by both the applicant and the opponent. Further, the Delhi High court order only take cognizance of the settlement terms agreed upon by both the parties regarding the infringement and there is no provision to withdraw a post grant opposition under the Indian Patents Act. The Controller therefore proceeded with deciding the Opposition on merits even after settlement between the parties.
A cost under section 77 of the Patents Act has also been imposed on both the parties for not keeping the controller informed regarding the suit.
Change is the only constant thing and recently, based on the comments provided by the stakeholders, the process of holding hearings saw a welcome move in the form of installation of video conference facility at the Patent office and at the agent’s respective offices which will readily bring down the time and energy spent in travelling to the patent office.
The Indian patent office is holding a stakeholders consultation meeting regarding issues relating to the annual statement of working of Patents under section 146 of the Indian Patents Act on 6th April 2018 at New Delhi.
Prior to the meeting the stakeholders were asked to provide their comments on the issues relating to working of patents. The comments received from various stakeholders (including Anand and Anand) have been published by the Indian Patent Office.
Indian Patent office (IPO) has started the WIPO Digital Access Service (DAS) with effect from 31/01/ 2018 for priority documents submitted by the applicants from the participating Patent offices under the WIPO–INDIA Cooperation agreement.
WIPO Digital Access Service (DAS) facilitates easy, secure, quick and inexpensive procedure for submission of certified copies of Priority documents: Some of the salient features of WIPO DAS as available on the Indian Patent office website are as under;
• Applicants can simply request the office of first filing to deposit/add the priority document into the WIPO DAS system, and request offices of second filing to use the service for obtaining access of such documents.
• Use of an access code provided by WIPO DAS to authorize access;
• Documents are exchanged via secure channels;
• The DAS Service is hosted and administered by WIP0.
• No need to provide a certified copy of a priority document separately to each office of second filing.
• No need to pay for multiple copies of paper priority documents;
Accordingly, IPO as a depositing Office will now upload certified copies of patent and industrial design applications as priority documents, including International Patent applications under PCT filed at the Office (RO/IN) filed on and after 31/ 01/ 2018, which the applicant specifically requests to make such priority documents available to the WIPO DAS.
Sphaera Pharma, Pte.’s, writ petition, seeking to restore the Indian Patent Application No. 3584/DELNP/2015 has been dismissed by the Delhi High Court. Earlier, the Petitioner had failed to file the request for examination within the prescribed time i.e. within a period of 48 months from the priority date (on or before 05.10.2016) and this resulted in abandonment of the application under Section 11B. The petitioner filed a petition at the IPO, requesting that the status of its Indian Patent Application be reviewed. However, the same was not considered by the IPO.
Aggrieved, the petitioner filed the present Writ petition. The Court held that it is apparent from the language of Section 11B (1) of the Patents Act that consideration of any application for examination beyond the stipulated period is not prescribed. The Court held that a plain reading of Section 11B(1) of the Patents Act and Rule 24B of the Rules clearly indicates that there is no scope for considering a request for examination beyond the prescribed period of 48 months from the date of application.
The counsel appearing for the petitioner referred to Rule 138 of the Rules and contended that the Controller of Patents retained the power to extend the time for a period of one month in certain cases. The Court found the contention unmerited. The Delhi High Court held that , it is candid from the reading that recourse to Rule 138 of the Rules is not available to extend the time prescribed under Rule 24B of the Rules, which expressly excludes its application to Sub-rules (1), (5) and (6) of Rule 24B of the Rules. Moreover, in terms of Rule 138(2) of the Rules, any request for extension of time has to be made before the expiry of such time as prescribed in the Rules. Therefore, even if the express language of Rule 138 of the Rules is ignored, the benefit of Rule 138 is not available to the petitioner as no such application for extension of time was made prior to expiry of the prescribed time (that is, prior to 05.10.2016). In view of the above, the petition was held to be unmerited and accordingly dismissed.
The Delhi High Court (DHC) is currently hearing a Writ petition related to working of patents in India and in an interim order has observed that there appears to be non-compliance issues with respect to this highly debated provision.
Section 146, Rule 131 of the Patent Act empowers the Controller General of Patents, Designs, Trademarks and Geographical Indications (CGPTM office) to call for information in a format set out in Form-27 prescribed under the Patents Rules, 2003 regarding the working of Patents in India. Failure to comply with the statutory requirement invites penalties and criminal action under Section 122 of the Patent Act which includes imposition of fine as well as initiation of criminal proceedings.
Some major Court observations are as follows:-
PATENTEE NON COMPLIANCE: The Annual Report 2012-13 of the CGPTM Office indicates failure of several patentees to conform to the requirements of even submission of statements of working and also that very few patents are actually worked.
“(i) Working of Patents (under Section 146): The Patent Office received 27946 Form 27 during the reporting year, of which 6201 were shown to be working.
Patents in force
Reported as working
LICENSEE NON COMPLIANCE: The Patent Act makes it mandatory not just for patentees but also licensees to submit statements of working, however no such information with regard to the licensees are published in the Annual report of the CGPTM office. A glaring observation is that there is non-compliance of the requirement even is case of patents where a compulsory licence has been granted. The vital case of Bayer vs NATCO which led to the first CL being granted in India to M/s NATCO Pharma also does not have any submission by the Licensee which has further repercussions such as withdrawal of the CL.
CG OFFICE IN ACTION: The DH Court also observed that CGPTM office are not taking any action for notional or incomplete compliance with the provisions related to this Section 146 of the Act.
The court clearly stated that- “The license holders are also required to file the information in Form-27 as a patentee.” Further, the details of the licenses and sublicenses certainly cannot be termed “confidential” and therefore, the Patents Office has to treat such suppression as failure to comply with the requirements under the Patent Act, 1970 and to take action against those who have thus failed. There can be no exemption from statutory compliance and that in case any query in the prescribed Form could not be complied with, the person submitting the Form need to state so.
The Court also directed the CGPTM office to submit the status of the amendment of the rules and the action which was earlier proposed with respect to the statement of working.
With the 31st March annual due date for submitting the working statement for the last financial year is approaching, the Patentees and License holders should be careful in preparing and submitting information regarding working amidst the above developments.