PATENT COMPULSORY LICENSING

Introduction

PATENT COMPULSORY LICENSING

The provision of ‘Compulsory Licensing’ has been given under Section 84 of the Indian Patents Act, 1970, allowing interested person to apply for a compulsory license for a patent if specific conditions are met.

The objective of compulsory licensing is to prevent “abuse of monopoly” granted by the patent. Compulsory Patent Licensing is to be granted on the following grounds:

•           Patented invention has not worked or is not available in India

•           Patented invention is available at unreasonable prices

•           Patented inventions have not been satisfied as per the requirement of the public i.e.           utility have not been satisfied.

The Controller will take into consideration the following points before granting compulsory licensing: -

·         Nature of Invention

·         Time passed since invention

·         Measures undertaken by the patentee to use the invention

·         Applicant’s intention and capability to use the patent for public benefit

COMPULSORY LICENSING OR REVOCATION OF PATENT

The authority, to grant compulsory licensing or revocation of the patent for non-working, is in the hands of the Controller of Patents. One of the main criteria that a patent is granted in India is that the invention shall be used for commercial purposes and scale. Failure to fulfil such obligation may result in the granting of a compulsory license or the revocation of the patent.

Revocation of a patent may be granted by the Controller of patent, after the expiry of 2 years from the date of granting compulsory licensing, only if the Controller is satisfied that the patented invention has not been worked in India or the utility of the patented invention has not been satisfied.

A compulsory license is granted in case of manufacture and export of pharmaceutical products, to any country facing a public health problem.

A compulsory license may be terminated in case the Controller feels that the conditions for the grant of the license are not fulfilled.

PROCEDURE OF LICENSING AND TERMINATION

As per Rule 96 of the Patents Rules, 2003, an application to the Controller for compulsory licensing or revocation of a patent shall be in Form 17 or Form 19 under Section 84, Section 85, Section 91, Section 92 or Section 92A respectively. Except in case the applicant is Central government, the application shall set out the details of the nature of the applicant’s interest including terms and conditions of the license which the applicant is willing to accept.

As per Rule 97 of the Patents Rules, 2003, after considering the evidence, terms and conditions, if the controller is satisfied that a prima facia case is not made out in order with any of the Sections mentioned in Rule 96 then the Controller shall notify the applicant of the same. Further, it is mentioned that the Controller shall refuse the application if the applicant does not request to be heard in the matter within one month from the date of such notification.

If the applicant requests for a hearing mentioned above then after giving the applicant an opportunity to be heard, the Controller shall determine whether the application may be proceeded with or whether it shall be refused.

Termination of Compulsory License: Provision to Terminate a Compulsory License is provided under Section 94(1) of the Patents Act, 1970. An application must be filed in Form 21 by the patentee or anyone with a title or an interest in the patent, along with supporting evidence to terminate a compulsory licence granted under Section 84 of the Act.

Furthermore, the compulsory licence holder must be served with a copy of such application and evidence and the applicant must inform the Controller regarding the date of the service. The compulsory license holder has the right to object to such termination and within one month the said holder must submit objections and evidence to the Controller as well as serve its copies upon the applicant. The holder cannot file any further evidence without the approval of the Controller.

After the completion of these steps, the Controller will schedule a hearing within 10 days of issuance of hearing notice.

The hearing procedure follows the rules of the opposition and if the Controller decides to terminate the compulsory licence then the Controller will issue an order with terms and conditions and serve copies to both the parties.