Connecting Compulsory Licensing and “Recentness” of a Patent

Section 84 of the Patents Act deals with compulsory licensing mechanism. Sub-section (1) of the provision reads as follows:

(1) At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—

(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

(b) that the patented invention is not available to the public at a reasonably affordable price, or

(c) that the patented invention is not worked in the territory of India.

What exactly is the import of sub-section (1) in terms of timing of the application for grant of a compulsory license and the working of the invention by the patentee? Let’s consider a hypothetical situation here.

1. A person X applies for a patent on August 15, 2007 and begins commercial exploitation of the invention which is the subject-matter of the patent application from August 16, 2007.

2. The patent is granted on December 25, 2010.

3. A person Y makes an application under Section 84 for grant of a compulsory license in January 2014.

In considering Y’s application for grant of a compulsory license, does Section 84 require the Controller to have regard to the patentee’s efforts to work the invention only after the grant of the patent i.e. December 25, 2010? Or must the Controller also have regard to the patentee’s efforts to commercially work the invention prior to the grant but after the date of filing of the application for a patent i.e. from August 16, 2007?

In other words, are the patentee’s efforts to work the invention prior to the grant of the patent critical in considering a request for a compulsory license by a third party? Probably the question is academic, but I would like to find an answer all the same.

Sub-section (6) of Section 84 reads as follows:

(6) In considering the application filed under this section, the Controller shall take into account,—

(i) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;

(ii) the ability of the applicant to work the invention to the public advantage;

(iii) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted;

(iv) as to whether the applicant has made efforts to obtain a licence from the patentee on  reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit:

PROVIDED that this clause shall not be applicable in case of national emergency or other circumstances of extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-competitive practices adopted by the patentee, but shall not be required to take into account matters subsequent to the making of the application.

The provision requires the Controller to take into account the time elapsed since the sealing of the patent and the efforts taken by the patentee/licensee to make full use of the invention. Although the provision states that the Controller “shall” consider the time which has elapsed since the sealing of the patent, it also requires him to factor into his analysis the “efforts taken by the patentee/licensee to make full use of the invention”.

These “efforts” would and should include efforts take by the patentee/licensee prior to the grant of the patent as well, since commercial working of the patented invention is not contingent on the grant of the patent (and most entities typically begin commercial exploitation of the invention as soon as they file the patent application).

Further, Section 84 consistently uses the words “patented invention”, as opposed to merely “patent”. In particular, sub-section (6) uses the word “invention”. If the legislature had intended the Controller to only consider the patentee’s efforts at commercialisation only after the grant of the patent, Section 84 would have referred to “working of the patent” instead of “working of the invention”.

Even otherwise, after grant of the patent, the invention is deemed as a patented invention right from the date of filing, and not just from the date of grant.  

Therefore, it follows that the efforts of the patentee prior to the grant of the patent, too is relevant in forming an opinion on the working of the invention.

How do I tie or connect this to the issue of “recentness” of a patent? In a few decisions, Indian Courts have linked the grant of an interim injunction to the “recentness of the patent”. The underlying rationale or objective behind this criterion of “recentness” is seldom understood in its entirety.

“Recentness”, as discussed by Indian Courts, does not refer to the time elapsed since the grant of the patent; it in fact refers to the time elapsed since the commercial exploitation/working of the patented invention. In other words, a prayer for an interim would be all the more justified if the patented invention has proven itself in the market during its life, which begins from the date of filing.

What this means is that in granting an interim injunction, the Court has regard to the efforts of the patentee even prior to the grant of the patent. Restricting the scope of this enquiry to merely the time elapsed since the grant of the patent is not only unfair, it also defies legislative logic since the term of the patent starts, not from the date of grant, but from the date of filing.

I’d like to know the opinions of our better-informed readers on this point.