Bar and Bench - Indian Legal news

Delhi HC issues notice in Shamnad Basheer’s PIL to enforce patent working disclosure norms

Aditya AK

The Delhi High Court today issued notice in a PIL filed by Prof. Shamnad Basheer seeking changes to the patent working norms in India.

Under Section 146(2) of the Patents Act, 1970 r/w Rule 131 of the Patent Rules, 2003, every patentee is required to make an annual disclosure as to how far and to what extent they have commercially worked their patent, a small price to pay for getting a twenty year monopoly on the invention.

If the patentee fails to prove that his invention has met the reasonable requirements of the public, the Act imposes a penalty in the form of a compulsory license, where third parties are given permission to manufacture and sell the invention for the benefit of consumers. If the compulsory licence also fails to fulfil this important public purpose, the patent could then be revoked. The PIL states that failure to make such a disclosure under Section 146(2) would “render the compulsory licensing and revocation provisions largely illusory”.

As stated in the PIL, Basheer conducted a study on patent working in three areas – pharmaceutical drugs, telecommunications and publicly funded research development. The findings revealed that 35% of the patentees failed to disclose their patent working status between 2009 and 2012. Those that did make disclosures did them in an “incomplete, negligent or incomprehensible” manner.

The PIL also censures the concerned authorities for their failure to take action against errant patentees. A response to an RTI query made by Basheer revealed that the authorities have never initiated action in this regard. Under Section 122(1) of the Act, the patentee is liable to pay a fine of 10 lakh rupees should he fail to make such disclosure.

In the prayer, Basheer has asked that the court order the respondents to enforce strict compliance with Section 146(2) and to initiate proceedings under Section 122(1) against errant patentees.

Basheer was represented by advocates Abhimnayu Bhandari and Sai Vinod, who argued before a bench comprising Chief Justice G Rohini and Justice Jayant Nath.

The matter is now posted for November 17.

Read the full petition: