There is
ongoing controversy and discussions about what all information a patentee or a licensee of a patent is
required to submit in Form 27 which is basically a statement of working of the
invention as claimed in the patent. It is pertinent to note that the basic
function of Form 27 is to bring on record working of a patented invention in
India. The information related to working of invention becomes necessary to
ascertain whether benefits of the invention are available to the society at
large.
In the
context, it is important to keep in mind that the basic function of the patenting
system is to make the advancement in state of the art available and accessible
to the public for at least research or development, which would not have been
possible if the inventors kept the novel and inventive creation to themselves.
Disclosure in a patent enables people to have access to the basic knowledge
about that advancement. In addition, the government grants monopoly to the
patentee so that the patentee can reap rewards out his/her intellectual
contribution to the technology. In course of enjoyment of the monopoly the
patentee further makes the invention available to public at large. Having a
patent but not working the patent defeats one of the basic purpose of the
patenting system. Accordingly, as a per the policy and law, the non-working of
patent is a ground for compulsory licensing.
It is
reasonable that for a patentee, dissemination of information related to working
of the patent has no incentive or value. A patentee would be more focused towards
reaping commercial benefits of the invention.
Moreover, as the norm is, the crucial information related to the
production of goods or services in a market segment is generally kept
confidential for warding off any competitors who might want to enter into
competition by merely utilizing such information as a starting point, which the
patentee or any business owner has developed after striving through many
challenges and difficulties. Accordingly, there is no incentive for a patentee
to disclose information relating to working of a patent. On the other hand, being
a management graduate, I understand that it might in fact be deleterious for
the patentee to disclose such crucial information to the market and may go
against the very basic right of the patentee to reap the benefits of monopoly
for the term of the patent. Therefore, it is unfair to force a patentee to disclose
competitive and confidential information.
Accordingly,
it is crucial to ascertain and establish what all information is legally
required to be furnished in the Form 27. As per my understanding, the basic
function of Form 27 is only for making sure that the invention or patent is
being worked in India. Therefore, a patentee can be forced to furnish information
only as is sufficient to reasonably establish the working of a patent in India.
Any further information would be against the very basic tenet and purpose of
the patent system, or even against the rights of a patentee to do business or
enjoy the monopoly.
If we
deliberate upon what all information is sufficient, as per my understanding, the
Form 27, as it is, asks sufficient information to establish whether the
invention is worked or not. In case of products or processes whose value is not
readily ascertainable, it would be reasonable to meet the requirement by merely
giving a range of value. It is to be specifically noted that, neither the Patent
Act, nor the Patent Rules require production or annexation of any documentary
evidence in support of the information in Form 27. In fact, the language of
Form 27 is in form of a declaration and nowhere it suggests requirement for
annexation of any documentary evidence to substantiate the declaration in Form 27.
One can’t miss the very title of Form 27 as “Statement regarding working of patented
invention on commercial scale in India”. Accordingly, any question of making it
more than a statement is not supported by either reason or the law.
One of the basic
reason for Form 27 being in existence is to enable the ground of non-working
for compulsory licensing. Accordingly, as the Controller has powers of civil
court, all the specifics or confidential information may be called for by the
Controller, if at all necessary, under proceedings of an application for grant
of a compulsory license.
Accordingly,
it is out-rightly unreasonable and unwarranted for requiring a patentee or a licensee of a patent to furnish
confidential information, other than is necessary for just indicating working
of a patent.
