Author is an Advocate and Registered Patent And Trademark Attorney with Aswal Associates and handles IPR division of the firm and is having the vast experience of having being associated with various premier IPR firms of India in the past. The author is also a member of APAA.
Patents are granted to encourage the inventors to disclose their inventions and also to grant them monopolistic right to exploit the invention. The objective of Patent Grant in India is to ensure that the inventions are worked in India on a commercial scale and to the fullest extent without any undue delay.
Accordingly, any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent, may make an application to the Controller for grant of compulsory license on the grounds that:
(a) the reasonable requirements of the public with respect to the patented invention have not been satisfied; and
(b) the patented invention is not available to the public at a reasonable price.
(c) the invention is not worked commercially to fullest extent in territory of India.
The circumstances constituting "failure to meet the reasonable requirements'' of public in respect of a patent are as follows:
(i) Inadequate manufacture in India or failure to grant licenses on reasonable terms with in a period of 6 months form applying by the applicant resulting in:
(a) Prejudice to an existing trade or industry or its development,
(b) Prejudice to the establishment of a new trade or industry in India,
(c) Prejudice to the trade or industry of any person or class of persons,
(d) Demand for the patented article not being met adequately by local manufacture,
(e) Failure to develop an export market for the patented articles made in India,
(f) Prejudice to the establishment of commercial activities in India;
(ii) Prejudice to the establishment or development of trade or industry in India in goods not protected by the patent arising from restrictive conditions imposed by the patentee;
(iii) Non-working of the patent in India on a commercial scale;
(iv) Demand for the patented articles being met by importation from abroad; and
(v) Commercial working of the patented invention in India being hindered or prevented by import of the patented articles from abroad.
Grant of Compulsory license is for the remaining term of patent unless a shorter period looks reasonable and required in case to the Controller.
Further, it is to be noted that while granting the license the Controller shall take into account the nature of invention, time elapsed, ability of applicant, his efforts for obtaining a license on reasonable terms. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors.
Normally request for grant of Compulsory License is published and Patentee and other interested persons are afforded reasonable opportunity to defend the grant. But in case of national emergency and other urgent condition in public interest the Controller may first grant the License and then notify the Patentee and other interested persons.
Under special circumstances of medical emergency supported by notification by foreign country in this regard controller may grant compulsory license to meet the medical emergency in that country.
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