Delhi HC directs Centre to submit plan to modify Patent Working Information form

The Delhi High Court has asked the Centre to place before it a timeline regarding the manner in which the modification to Form 27 concerning patent working information would be undertaken..Earlier, the Court had also asked the government to file an affidavit enlisting various steps for putting a robust enforcement framework in place for prosecuting patentees who ignore the statutory patent working mandate..The directions came in a writ petition filed by Prof (Dr.) Shamnad Basheer in 2015, which had pointed out serious lapses and violations of the provision with regard to filing of patent working documents (commonly referred to as Form 27 filings) by patentees..Appearing for Basheer, Advocates Abhimanyu Bhandari and Sai Vinod submitted that the patent working mandate had never been taken seriously over the years and unless there was some threat of sanction, a large number of patentees would continue ignoring this important statutory mandate..However, he stated that it was not the intention of the petitioner to simply trigger prosecution against errant patentees. It was rather suggested that patentees who had failed to comply with this mandate (in full or in part) in the previous years be offered a last ‘cut off date’ to comply, and that action should only be taken against those who still failed to comply..Government Standing Counsel Amit Mahajan broadly agreed with the contention that the patent working (disclosure) mandate had not been enforced against errant patentees..However, he stated that until there was a legal framework in place for initiating prosecution, the patent office could do little. He further stated that he has been instructed that the matter needs a relook..The Division Bench of Acting Chief Justice Gita Mittal and Justice C Hari Shankar observed that given the fact that this petition was filed way back in 2015, the matter ought to have engaged the attention of the government long ago..“It is also astonishing that the matter has proceeded in this manner for a long period of 45 years since the statute was enacted. Be that as it may, expeditious steps regarding the working of the statutory provisions as well as the changes, if any, are required in the statute, rules and prescribed forms deserve to be taken.”.Various lawyers appearing for different parties pointed out that one of the major difficulties in ensuring compliance with the provision of Section 146 of the Patents Act is the manner in which Form 27 has been worded..It was submitted that the form was notified in the year 1970, and though amended in the year 2003, had failed to take into consideration the several scientific and technological requirements as well as the confidentiality issues relating to some of the patents..Senior Counsel Gopal Subramanium, representing Ericsson, submitted that on account of confidentiality attached to the issues relating to patents and agreements entered into between patentees and their licensees and sub-licensees, it is not always possible to disclose the terms on which the license has been issued..Considering the submissions made by various parties, the Court directed the government to come up with a plan to modify Form 27 so that compliance can be effectively enforced. The matter will next be heard on March 1..In January, the Court passed a detailed order in the same petition holding that patent working information cannot be termed as “confidential” and that submitting the same by patentees is compulsory..Read Order: