On January 10, 2018, the Delhi High Court passed an important order saying that every patentee is required to submit their patent working information as prescribed by Form 27. The court rejected the contention that such information is confidential, and made it clear that as per the provisions of the Patents Act, 1970, every patentee is mandated to furnish this information without exception.

The patent system provides patentees with a set of exclusive rights over their products. This makes it the patentee’s obligation to discharge their duty towards the society in relation to that product. In other words, if a patent is held, then it must be utilized for public benefit. The Patents Act Section 83(g) lays down the object of issuance of patents, which is to make the benefit of the invention available to the common public at reasonable prices.

Section 146 of the Act empowers the Controller General of Patents to call for patent working information within a period of two months from the date of the notice. The format in which this information has to be submitted has been set out in Form 27.

However, the Writ Petition filed by Prof. Shamnad Basheer in the Delhi High Court claimed that the Controller General of Patents had failed to comply with the provisions of the Act, and demanded that it be directed to enforce its statutory obligations under the Act.

Prof. Basheer pointed out before the Court that the Office of Controller General of Patents had stated in its annual report in 2012-13 that 43,920 patents were issued that year, out of which only 27,946 returns as prescribed by Form 27 were received. More importantly, only 6,201 patients were found to have been worked by the patent holders.

Prof. Basheer submitted an RTI response, which showed that no action had been taken against those who had failed to submit Form 27.

Prof. Basheer cited the example of NATCO Pharma that had been granted a compulsory license over a vital anti-cancer drug but did not reveal whether they were operating the license. (Section 146 of the Patents Act treats patentees and license holders equally with regard to these regulations.)

Another example of Ericsson was cited, where the company did not disclose its licensing details claiming that information was confidential and a trade secret.

The companies, however, did raise some interesting points in the court. NATCO Pharma contended that Form 27 was vague and not clearly drafted. Ericsson argued that it had a court order protecting it from even disclosing the mere existence of a license and licensee name. The company described it as ‘club confidentiality’ where selected persons, such as lawyers and some key witnesses are allowed to view the documents of such sensitive nature.

The Delhi High Court has now ruled that this contention of “confidentiality” is erroneous and that there can be no exemption from statutory compliance with the Act. Proper and timely filing of Form 27 must be done by all patentees.

The Bench of Acting Chief Justice Gita Mittal and Justice C. Harishankar observed that the details of licenses and sub-licenses, which are required to be submitted in Form 27, cannot be termed as confidential information. Therefore, the Patents Office must act against those who fail to comply with the requirements of Section 146 of the Patents Act, 1970. 

The Court also directed the counsel of the Central Government and the Controller General of Patents, Amit Mahajan, to update it about the action taken against non-compliant patentees, and further sought to know the measures being taken to rectify Form 27.

Author: Aryan Vij, Intern at Global Patent Filing,  and can be reached at  support@globalpatentfiling.com.