Writ seeking directions for UOI to enforce norms relating to “working” of patents disposed

A Public Interest Litigation (PIL) was filed at the Delhi High Court under Article 226 of Indian Constitution as a writ of mandamus (Shamnad Basheer Vs. Union of India (UOI) & Others) seeking directions for the Union of India (UOI) to perform their statutory duty to enforce norms relating to “working” of patents under Section 146 read with Rule 131 of the Patents Act.

The Court had, vide an order dated 15th March, 2018, directed the union of India to place before the Court a reasonable timeline within which amendments as may be deemed necessary for strict implementation of the working statement requirement be effected with the consultation of stakeholders.

A Stakeholder consultation meeting in this regard has already taken place at Delhi, on 6th of April 2018. The UOI has proposed approximately 11 months to have any proposed amendment notified in the Form (Form 27) and the rules.

The proposed timelines by the Union were accepted by the court and the writ Petition has been disposed off vide an order dated 23rd April 2018. The ministry was also directed to make every effort to ensure that there is no deviation in the same and the matter is treated in right earnest and given the seriousness which it deserves to be accorded to it.



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. 

Stay tuned for more update!




Working of Patents being reviewed by the DHC

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.


  2009-10 2010-11 2011-12 2012-13
Patents in force 37334 39594 39989 43920
Form-27 received 24009 34112 27825 27946
Reported as working 4189 6777 7431 6201”
  • 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.


Generation of foreign exchange is not in public interest

The plaintiff, Bayer sued BDR Pharmaceuticals for injunction restraining infringement of Product Patent no.IN225529 and Process Patent no. IN188419 and for other reliefs. Bayer asserted that the patents cover vardenafil, a drug used to treat erectile dysfunction.

Previously, Bayer sued Ajanta for injunction restraining infringement of the same patents. Justice Gauba of the Delhi High Court in the Ajanta Suit held that Bayer did not merit injunctive relief as the patent in question is a non-worked patent, and exports by Ajanta generated employment and tax revenue for the state, and it was therefore in the public interest to allow them to continue.

In the BDR case, a hearing was held on 14 February, and BDR cited Justice Gauba’s order in Ajanta case to argue that an injunction was not merited in its case either. BDR also argued that its exports earn foreign exchange for India and encourage economic activity. Justice Endlaw rejected the Ajanta order’s precedential value being an ad-interim order and ordered the case to be listed in two days. The court also held that if such parameters are to be adopted, then in each case of a non-working of patent, infringement of the patent would be allowed. The court also noted that the drug is also not a life saving drug.

On 16 February, the BDR case was referred to mediation. It is set to be listed again on 8 March.

PIL on working disclosure requirements

It is given fact that every patentee and licensee is required to file a statement of commercial working of active granted Indian patent under Section 146(2) of the Indian Patents Act for the calendar year on or before March 31 of the next year in the format prescribed by the Act.

The patentee/licensee is required to furnish information pertaining to whether the patented invention has been worked or not worked. In an event the patent is not worked, the patentee/licensee is required to provide reasons for not working and steps being taken for working of the invention. If the patented invention is worked, the quantum and value of the patented product manufactured in India and those imported from other countries needs to be submitted.

The licenses and sub-licensees granted during the year as well as a statement whether public requirement has been met, the degree to which it is met (partly or adequately or to the fullest extent) and the reasonable price at which it is met is also required to be recorded.

Defaulting in meeting with this requirement at the Indian patent office may attract a penalty extending up to rupees ten lakh. Further, any false information on working may lead to a penalty of fine or imprisonment which may extend to six months or both. It is also worth noting that non-working of the patented invention for three years in India is a ground for the grant of compulsory license.

A Public Interest Litigation (PIL) was filed at the Delhi High Court and the same was accepted on 21st August 2015 under Article 226 of Indian Constitution as a writ of mandamus in Shamnad Basheer vs Union of India & Others seeking directions for the Union of India (UOI) to:

  1. Perform their statutory duty to enforce norms relating to disclosure of “commercial working” of patents under Section 146 read with Rule 131 of the Patents Act, 1970 and Rules by every patentee and licensee;
  2. Constitute an expert committee to improve the current format for patent “working” disclosure, as the present format is irrational and grossly insufficient to fulfill the objectives of the Patents Act.

The PIL is based on the survey conducted by the petitioner in April 2011 analyzing some working statements filed by Indian patentees. The survey is stated to reveal that nearly 35% of the patentees failed to disclose their patent working status during 2009 to 2012 and the data so disclosed were highly defective, incomplete, negligent or incomprehensible.

The PIL also alleges that there is massive discrepancies with Patent working disclosure by way of either non-compliance of working requirements or compliance with defects such as:

  1. Refusal to declare
  2. Incomplete information regarding quantum and value
  3. Not providing reasons for not working and steps taken for working by patentee or licensee
  4. Indeterminate quantity of the product
  5. Non-disclosure place of manufacture /importation
  6. Non-compliance by Licensee
  7. Statement on reasonable requirements of the public
  8. Defects in E-filing facility

The PIL prays for the Respondent authorities to be directed:

  1. To strictly enforce compliance with Section 146 with Rule 131of the Patents Act, 1970
  2. To initiate proceedings under Section 122(1) of the Patents Act, 1970 against errant patentees and licensees who have failed to comply with the mandatory requirement of Section 146.
  3. To issue notices under Section 146(1) of the Patents Act, 1970 to patentees and licensees to furnish true and complete information of commercial working of the patent;
  4. To immediately rectify the ‘comprehensive online filing services for patents’ to enable patentees and licensees to submit full and complete working information;
  5. To publish and upload the entire information relating to commercial working of all patents for all years of operation of the patent on their website as per Section 146(3) of the Patents Act, 1970 and Rules thereunder;
  6. To declare that the present format of FORM-27 (the format as prescribed in Schedule II of the Patents Rules, 2003 is insufficient to sub-serve the purpose of the Patents Act, 1970;
  7. To constitute a committee of experts to suggest reforms to improve the public disclosure norms around the commercial working of patents.

The respondent UOI has been provided four week time to file its reply statement. It would be interesting to follow the PIL and the stance taken by the UOI in the matter. Further, one may also be curious to know whether the major patent filers would join the PIL as amicus curiae. In all fairness, appointment of an advisory/committee by the Court seems to be a likely outcome for such a high stake question. The next date of hearing is 17th November 2015.