Compulsory licensing of Patent Registration in Coimbatore

Section 92: Compulsory license on notification by Central Government

If the Central Government is satisfied, in respect of any patent in force in circumstances of national emergency or in circumstances of extreme urgency or in case of public non-commercial use, that it is necessary that compulsory licenses should be granted at any time after the sealing thereof to work the invention, it may make a declaration to that effect, by notification in the official gazette, and thereupon the following provisions shall have effect, that is to say,

• The controller shall, on application made at any time after the notification by any person interested, grant to the applicant a license under the patent registration in Coimbatore on such terms and conditions as he thinks fit;
• In settling the terms and conditions of a license granted under this section, the Controller shall endeavor to secure that the articles manufactured under the patent shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantages from their patent rights.
• The procedure as mentioned in Section 83, 87, 88, 89 and 90 shall apply in relation to the grant of such licensees as they apply in relation to the grant of licenses under section 84.

However, where the controller is satisfied on consideration of the application that it is necessary in-

• A circumstance of national emergency; or
• A circumstance of extreme urgency; or
• A case of public non-commercial use,

Which may arise or is required, as the case may be, including public health crisis relating to Acquired Immuno deficiency Syndrome, Human Immune Deficiency Virus, Tuberculosis, Malaria or other epidemics, the procedure as mentioned in Section 87 shall not apply. However, the controller shall, as soon as may be practicable, inform the patentee of the patent relating to the application for such non-application of Section 87.

Section 92A: Compulsory license for export of patented pharmaceutical products in certain exceptional circumstances

Compulsory license shall be available for manufacture and export of patented pharmaceutical product to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems, provided compulsory license has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India. The Controller shall, on receipt of an application in the prescribed manner, grant a compulsory license of patent solely for manufacture and export of the concerned pharmaceutical product to such country under such terms and conditions as may be specified and published by him. The provisions of (a) and (b) shall be without prejudice to the extent to which pharmaceutical products produced under a compulsory license can be exported under any other provision of this Act. ‘Pharmaceutical products’ means any patented product, or product manufactured through a patented process, of the pharmaceutical sector needed to address public health problems and shall be inclusive of ingredients necessary for their manufacture and diagnostic kits required for their use.

Section 91: License for related patents

At any time after the grant of a patent, any person who has the right to work any other patented invention, either as patentee or as licensee thereof, exclusive or otherwise, may apply to the Controller for the grant of a license of the first mentioned patent on the ground that he is prevented or hindered without such license from working the other invention efficiently or to the best advantage possible. No order under such an application shall be made unless the Controller is satisfied. That the applicant is able and willing to grant, or procure the grant to the patentee and his licensee if they so desire, of a license in respect of other invention on reasonable terms; and that the other invention has made a substantial contribution to the establishment or development of commercial or industrial activities in the territory of India. Controller, if satisfied, that the grounds alleged have been established by the applicant, he may make an order on such terms as he thinks fit granting a license under the first mentioned patent and a similar order under the other patent if so requested by the proprietor of the first mentioned patent registration in Coimbatore or his licensee. However, such a license granted by the controller shall be non-assignable except with the assignment of the respective patents. The procedure as mentioned in Sections 87, 88, 89 and 90 shall apply to licenses granted under this provision.

Section 90: Terms and conditions

In settling the terms and conditions of a license, the Controller endeavors to secure

• That the royalty and other remuneration , if any, reserved to the patentee or other person beneficially entitled to the patent, is reasonable, having regard to the nature of the invention, the expenditure incurred by the patentee in making the invention or in developing it and obtaining a patent and keeping it in force and other relevant factors .
• That the patented invention is worked to the fullest extent by the person to whom the license is granted and with reasonable profit to him;
• That the patented articles are made available to the public at reasonably adorable prices
• That the license granted is a non-exclusive license;
• That the right of the licensee is non-assignable;
• That the license is for the balance term of the patent unless a shorter term is consistent with public interest;
• That the license is granted with a predominant purpose of supply in the Indian market and that the licensee may also export the patented product, if need be in accordance with the provisions of sub-clause (iii) of clause (a) of sub-section (7) of section 84.
• That in the case of semi-conductor technology, the license granted is to work the invention for public non-commercial use;
• That in case the license is granted to remedy a practice determined after judicial or administrative process to be anti-competitive, the licensee shall be permitted to export the patented product, if need be.

The terms and conditions of a license settled by the Controller, may be revised upon patent application by the licensee after he has worked the invention on a commercial scale for at least twelve months, on the ground that the terms and conditions settled have proved to be more onerous than originally expected and that in consequence thereof the licensee is unable to work the invention except at a loss. However, no such application shall be entertained a second time.

Section 87: Procedure for the grant of compulsory license

Where the Controller is satisfied, upon consideration of an application for compulsory license of patent registration, that a prima facie case has been made out, he shall direct the applicant to serve copies of the application upon the patentee and any other person appearing from the register to be interested in the patent in respect of which the application is made, and shall publish the application in the official journal. The patentee or any other person desiring to oppose the application may, within two months from the date of publication of the procedure application or within such further time as the Controller may on application (made either before or after the expiration of the prescribed time) allow, give to the Controller notice of opposition. The notice of opposition shall include grounds on which the application is opposed and the terms and conditions of the license, if any, the opponent is prepared to grant to the applicant and shall be accompanied by evidence in support of the opposition. The opponent shall serve a copy of his notice of opposition and evidence on the applicant and notify the Controller when such service has been affected. No further statement or evidence shall be delivered by either party except with the leave of or on requisition by the Controller. The Controller shall forthwith fix a date and time for the hearing of the case and shall give the parties not less than ten days’ notice of such hearing. The procedure specified in sub-rules (2) to (5) of rule 62, shall, so far as may be apply to the procedure for hearing under this rule as they apply to the hearing in opposition proceedings of patent registration. If, upon consideration of the evidence, the Controller is satisfied that a prima facie case has not been made out, he shall notify the applicant accordingly, and unless the applicant requests to be heard in the matter, the Controller shall refuse the application. The applicant shall make such a request within one month from the date of such notification. If the applicant requests for a hearing within the time allowed, the Controller shall after giving the applicant an opportunity of being heard, determine whether the application may be proceeded with or whether it shall be refused and issue a speaking order on the matter as expeditiously as possible.

Section 84: Contents of application

Such an application shall contain a statement setting out the nature of the applicant’s interest, the facts upon which the application is based and the terms and conditions of the license the applicant is willing to accept.

Section 88: Application by licensee

Where the Controller is satisfied on an application for compulsory license that the manufacture, use or sale of materials not protected by the patent is prejudiced by reason of conditions imposed by the patentee upon the grant of licenses under the patent, or upon the purchase, hire or use of the patented article or process, he may subject to the provisions of Section 84, order the grant of licenses under the patent to such customers of the applicant as he thinks fit as well as to the applicant. Where an application for compulsory license is made by a person being the holder of a license under the patent, the Controller may, if he makes an order for the grant of a license to the applicant, order the existing license to be cancelled, or may, if the thinks fit, instead of making an order for the grant of a license to the applicant, order the existing license to be amended.

Section 88: Compulsory license in case of two or more patents held by the same patentee

Where two or more patents are held by the-same patentee and an applicant for a compulsory license establishes that the reasonable requirements of the public have not been satisfied with respect to some only of the said patents, then, if the Controller is satisfied that the applicant cannot efficiently or satisfactorily work the license granted to him under those patents without infringing the other patents held by the patentee and if those patents involve important technical advancement or considerable economic significance in relation to the other patents, he may, by order, direct the grant of a license a respect of the other patents also to enable the licensee to work the patent or patents in regard to which a license is granted under section 84.

Section 94: Termination of compulsory license

Patentee or any other person deriving title or interest in the patent, may make an application for termination of compulsory license granted under Section 84 on the ground that the circumstances that gave rise to the grant thereof no longer exist and such circumstances are unlikely to recur The holder of the compulsory license shall have the right to object to such termination While considering such an application, the Controller shall take into account that the interest of the person, who-had-previously been granted the license, is not unduly prejudiced.