Section 146 of the Patents Act, 1970: A synopsis

Sec. 146 of the Indian Patent Act 1970 mandates this declaration filed annually through Form 27. Based on a case before the Delhi High Court, the IPO was instructed to take necessary steps to implement strong the declaration by Form 27. The IPO invites opinions from the stakeholders, and based on their opinions; the IPO is proceeding to set its rules and regulations.

What is the scope of Sec.146 of the Indian Patent Law?

Indian Patent Law bainds every patent holder and license holder to file a declaration on the patented innovation's degree. It is helpful on a commercial scale. Sec. 146 of the Indian Patent Act 1970 mandates this declaration filed annually through Form 27.

However, the compliance procedure is not smooth. Often when the patent holder is in default, the License holder fails to comply, or compliance is not at par with the requirements under Section 146 of the Act. 

The Indian Patent Office does not take stern action to prevent the failure to comply with several patent holders or license holders in recent preceding years. Section 146 of the Indian Patent Act states that every patent holder or license holder shall submit a declaration. The declaration shall be in the prescribed manner and form and at the said intervals but not less than six months, to the limit to which the patented invention has been operated on a commercial scale in India.

Why did it become necessary to bring changes to Form 27?

Prof. Shammed Basheer filed a Public Interest Litigation before the Delhi High Court in 2015 against the Indian Patent Office for its non-compliance with the provision of Sec. 146 (r/w Rule 131) of the Indian Patent Act 1970.

The matter ran for three years. In 2018, the Delhi High Court passed an order suggesting the Government of India submits a draft plan for the actions to be taken to maintain the standard of the enforcement mechanism under Form 27. The court also suggested taking strict action against those who do not comply with the rules.

Following the above order, the Indian patent office asked for recommendations from various stakeholders about an issue related to the management of Patents under the Patents Act, 1970, which was to be suggested on or before 30th March 2018.

On 2nd April 2018, various suggestions from stakeholders about an issue related to the management of Patents was uploaded on the portal of Intellectual Property India, highlighting these points:

  • One Patent One Product

    It was widely discussed among the stakeholders, which concluded to the disclosure of the patented technology by the patent holder used in the patented product. Most of the stakeholders were of the opinion that the patent should be helpful in several fields and for many purposes.

    One product may include multiple patents with cross-licensing or complex licensing infrastructure. This process makes it impossible to contribute information about those secured within a product having a plurality of patented technology incorporated within it. It adds to the difficulty when those patents are extended to other countries. The recommendation by the stakeholders was to remove such requirements in Form 27.
  • Quantum Value of the Patented Product

    Form 27 prescribes the patent holder to submit the information about the patented product manufacturing in India and abroad. This makes it challenging to calculate India's and outside sales in the same parameters. That makes compliance difficult.
  • Confidential Information

    When a patent holder proceeds for licensing voluntarily, that involves several sensitive and confidential information, disclosure of which can cause a problem. The stakeholders suggested only the disclosure of the name is the license holder keeping the rest of the information a secret can be formatted in the new Form 27.

Are the points being implemented by the patent office?

From the above recommendation, it can be concluded that the patent office should replace the old format of Form 27 and introduce a new updated Form 27 comprising several issues suggested by the stakeholders. This change will help the patent office to overcome the overload from the patent holders and the Indian Patent Office.

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