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Patent Working Requirements and Complex Products
https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products
<b>The paper titled "Patent Working Requirements and Complex Products" has been published in the latest issue of the NYU Journal of Intellectual Property and Entertainment Law. It is one of the outputs of the Pervasive Technology project and has been authored by Prof. Jorge L. Contreras, Paxton M. Lewis, and Rohini Lakshané.</b>
<p><strong><a class="external-link" href="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/Contreras_Article_Vol-7-No-1_1-.pdf">Download PDF here</a>. </strong><span>The paper was <a class="external-link" href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/">published by JIPEL NYU Journal of Intellectual Property & Entertainment Law</a>, Vol. 7 - No.1 on January 16, 2018.</span></p>
<hr />
<div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#intro">Introduction</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#I">I. Patent Working Requirements</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IA">A. History of Patent Working Requirements</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IB">B. The Evolution of India’s Patent Working Requirement</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IB1">1. Background</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IB2">2. The Patents Act, 1970</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IB3">3. India’s Current Working Requirement</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IC">C. The Indian Working Requirement and Natco Pharma Limited v. Bayer Corporation</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#ID">D. Form 27 and India’s Reporting Requirement</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IE">E. Theory and Criticism of Form 27</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#II">II. Empirical Study of Indian Form 27 Disclosures in the Mobile Device Industry</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIA">A. Background: Existing Data and Studies</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIB">B. Methodology</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIC">C. Limitations</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#III">III. Findings</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIA">A. Aggregated Data – Forms Found and Missing</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIB">B. Working Status</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIC">C. Descriptive Responses</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIC1">1. Working Status Not Disclosed</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIC2">2. Patents Not Worked</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIC3">3. Varied Interpretations of Working</a></div>
<div class="l3" style="padding-left: 60px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IIIC4">4. Changes in Status</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IV">IV. Discussion and Analysis</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IA">A. Process Weaknesses</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IB">B. Non-Enforcement and Non-Compliance</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IC">C. Uncertainty Surrounding Working and Complex Products</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#ID">D. Strategic Behavior</a></div>
<div class="l2" style="padding-left: 30px; text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#IE">E. Opportunities for Further Study</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#conclusion">Conclusion</a></div>
<div class="l1" style="text-align: justify; "><a href="http://jipel.law.nyu.edu/vol-7-no-1-1-contreras/#appendix">Appendix</a></div>
</div>
<p><span> </span></p>
<h3><a name="intro"></a>Introduction</h3>
<p style="text-align: justify; ">In 2012, Natco Pharma Ltd. (“Natco”) petitioned the Indian Patent Office (“IPO”) for a compulsory license to manufacture Bayer’s patented cancer drug, Nexavar.<a name="_ftnref1"></a> Natco cited numerous grounds in support of its petition, including Nexavar’s high cost and limited availability in India.<a name="_ftnref2"></a> But along with these relatively common complaints in the global access to medicines debate,<a name="_ftnref3"></a> Natco raised a less typical theory; Bayer failed to “work” the patent sufficiently in India.<a name="_ftnref4"></a> In doing so, Natco invoked a seldom-used provision of Indian patent law that allows any person to seek a compulsory license under an Indian patent that is not actively being commercialized by its owner within three years from the issuance of the patent.<a name="_ftnref5"></a></p>
<p style="text-align: justify; ">Patent working requirements exist in different forms throughout the world. Broadly speaking, to “work” a patent is to practice, in some manner, the patented invention within the country that issued the patent. While patents are seen as a means to create incentives for inventors to share their ideas, working requirements are intended to mitigate the exclusivity of patent monopolies by requiring the patent holder to disseminate its invention into the local market.<a name="_ftnref6"></a> The patent holder thereby imparts knowledge and skills to the local community, enhances economic growth, supports local manufacturing, and promotes the introduction of innovative new products into the local market.<a name="_ftnref7"></a></p>
<p style="text-align: justify; ">While patent working requirements have existed in various jurisdictions for more than a century, working requirements have seldom been the subject of vigorous enforcement.<a name="_ftnref8"></a> The U.S.-Brazil dispute and the Natco case represent a revival of interest in patent working requirements. In particular, the <i>Natco</i> case has reintroduced questions of whether working requirements are, or should be, allowed under the TRIPS Agreement.</p>
<p style="text-align: justify; ">In prior work, Contreras and LakshanÈ have analyzed the domestic Indian patent landscape pertaining to mobile device technology.<a name="_ftnref9"></a> The authors now extend that work to examine the working of those patents. This Article presents a detailed case study of the Indian patent working statutes and their procedures, particularly the requirement that all patent holders file an annual form (Form 27) to demonstrate that their patents are being worked in the country. We collected and reviewed all publicly available Forms 27 in the mobile device sector to assess the completeness and accuracy of the information disclosed. We then analyzed the results to assess the robustness of India’s patent working requirement and its utility for complex information and communication-based products and technologies.</p>
<p style="text-align: justify; ">The remainder of this Article proceeds in four principal parts. Part I.A provides a brief history of patent working requirements. Part I.B describes the development of India’s current working requirements and its novel Form 27 filing requirement. Part II describes our empirical study of India’s Form 27 filings in the mobile device sector. Part III discusses our findings and analysis. We conclude with recommendations for further study and policy.</p>
<h3><a name="I"></a>I. Patent Working Requirements</h3>
<h4><a name="IA"></a>A. History of Patent Working Requirements</h4>
<p style="text-align: justify; ">The origins of patent working requirements have been traced to the 1300s, when early patent privileges were granted in jurisdictions such as feudal England and the Republic of Venice, with an expectation that foreign innovators would teach the invented art to local industry.<a name="_ftnref10"></a> The underlying incentive for providing monopoly rights was thus tied to local industrialization.<a name="_ftnref11"></a> This incentive to share technology was directed not only to local citizens but, even more so, to foreign inventors.<a name="_ftnref12"></a> Countries issued patent privileges to encourage foreigners to migrate and develop or protect local industry by teaching their art to the local population.<a name="_ftnref13"></a> Local industrialization was thus considered a central means to economic development and technological advancement.<a name="_ftnref14"></a></p>
<p style="text-align: justify; ">Despite these early developments, by the late 19th and early 20th centuries, developed countries’ conceptual understanding of a patentee’s obligation and its relevance to national development began to shift away from local manufacturing.<a name="_ftnref15"></a> As a result, in many developed countries disclosure through importation became sufficient to meet the “informational goal” of patents, particularly patents that represented improvements to existing technologies.<a name="_ftnref16"></a></p>
<p style="text-align: justify; ">The 1883 Paris Convention for the Protection of Industrial Property prohibited the automatic forfeiture of a patent for a failure to work it locally.<a name="_ftnref17"></a> While both developed and developing countries disputed the proper remedy for the failure to work a patent, there remained a consensus that failure to work a patent was inconsistent with the patent privilege.<a name="_ftnref18"></a></p>
<p style="text-align: justify; ">A half-century later, the 1925 Hague Conference, which amended the Paris Convention, recognized the failure to work a patent as an abuse that member states could “take necessary legislative measures to prevent.”<a name="_ftnref19"></a> As a remedy for non-working, drafters viewed compulsory licensing of non-worked patents as more palatable than outright forfeiture.<a name="_ftnref20"></a> Nevertheless, forfeiture of patent rights was still permitted under the Convention, though an action for forfeiture could not be brought until two years following the issuance of the first compulsory license covering the non-worked patent.<a name="_ftnref21"></a>In the 1967 Stockholm amendments to the Convention, further limitations on compulsory licensing for non-working patents were introduced, notably prohibiting member states from permitting the grant of a compulsory license for failure to work until three years after the issuance of the allegedly non-worked patent.<a name="_ftnref22"></a></p>
<p style="text-align: justify; ">Within the flexibilities allowed by the Convention, developing countries continued to adopt strict working requirements and to resist international requirements that favored developed countries.<a name="_ftnref23"></a> For example, in the late 1970s and early 1980s, developing countries proposed revisions to the Paris Convention that would have provided that mere importation did not satisfy local working requirements and to permit the expansion of sanctions for non-working beyond compulsory licensing.<a name="_ftnref24"></a></p>
<p style="text-align: justify; ">The desire of developed countries for stronger international rules relating to intellectual property led to the formation of the World Trade Organization (“WTO”) in 1994, under which the Trade Related Aspects of Intellectual Property Rights (“TRIPS”) Agreement was negotiated.<a name="_ftnref25"></a> While the TRIPS Agreement does not explicitly address patent working requirements, Article 2.1 incorporates Article 5A of the Paris Convention (i.e. the article related to compulsory licensing and the limitations on granting compulsory licenses discussed above), and Article 2.2 reinforces the existing obligations of members of the Paris Union.<a name="_ftnref26"></a> Additionally, Article 27.1 of the TRIPS Agreement, which establishes requirements for patentable subject matter, prohibits “discrimination as to the place of invention, the field of technology and whether products are imported or locally produced” raising a question as to whether countries with local working requirements must recognize importation as an acceptable manner of satisfying those requirements.<a name="_ftnref27"></a>However, Article 30 of the TRIPS Agreement permits a member state to allow exceptions to the exclusive rights of a patent holder, and Article 31 allows a state to issue a “compulsory” license under one or more patents without the authorization of the patent holder “in the case of national emergency or other circumstances of extreme urgency or in cases of public non-commercial use.”<a name="_ftnref28"></a> Given these mixed signals, commentators are divided on whether, and how, the TRIPS Agreement may affect local working requirements.<a name="_ftnref29"></a></p>
<p style="text-align: justify; ">To date, the only WTO dispute challenging the validity of national working requirements has been between the United States and Brazil.<a name="_ftnref30"></a> In 2000, the Clinton administration, responding to concerns raised by the American pharmaceutical industry, initiated a WTO dispute proceeding to challenge Brazil’s local working requirement.<a name="_ftnref31"></a> The United States argued that Article 68 of Brazil’s 1996 Industrial Property Law violated Articles 27(1) and 28(1)<a name="_ftnref32"></a> of the TRIPS Agreement for discriminating against U.S. owners of Brazilian patents whose products were imported, but not locally produced, in Brazil.<a name="_ftnref33"></a></p>
<p style="text-align: justify; ">Despite the pending WTO litigation, the Brazilian Ministry of Health adopted an aggressive stance toward reducing the price of antiretroviral medications and threatened to issue compulsory licenses for the local manufacture of two such drugs, both patented by U.S. companies, if they were not discounted by 50%.<a name="_ftnref34"></a> In response to political and public pressures, the United States and Brazil settled the dispute before any definitive opinion was issued by the WTO.<a name="_ftnref35"></a></p>
<h4><a name="IB"></a></h4>
<h5><a name="IB1"></a></h5>
<p style="text-align: justify; ">As a British colony, India’s pre-independence patent laws were modeled largely on then-prevailing English law.<a name="_ftnref36"></a> India gained its independence from Great Britain in 1947 and almost immediately began to consider the adoption of patent laws reflecting emerging national goals of industrialization and economic development.<a name="_ftnref37"></a> Thus, in early 1948, a committee known as the Tek Chand Committee was appointed to review and reconcile India’s patent laws with its national interests.<a name="_ftnref38"></a> The committee’s efforts resulted in the Chand Report, which recommended the use of compulsory patent licenses to stimulate India’s industrial economy.<a name="_ftnref39"></a></p>
<p style="text-align: justify; ">A second major report commissioned by the Indian government and prepared primarily by Shri Justice N. Rajagopala Ayyangar, was issued in 1959.<a name="_ftnref40"></a> The Ayyangar Report suggested that India should deviate from the “unsuitable patent policies of industrialized nations” because patent regimes operate differently in developing versus developed nations.<a name="_ftnref41"></a> Recognizing that a significant weakness in developing nations “is that foreign patent owners do not work the invention locally,” the Ayyangar Report recommended compulsory licensing as “the remedy to redress the handicap of foreigners not working the invention locally.”<a name="_ftnref42"></a></p>
<h5><a name="IB2"></a>2. The Patents Act, 1970</h5>
<p style="text-align: justify; ">The India Patents Act, 1970, was enacted in 1972.<a name="_ftnref43"></a> Among other things, it sought to address the economic repercussions resulting from foreign dominance of the patent landscape in India, as recommended by the Chand Report and the Ayyangar Report.<a name="_ftnref44"></a> Accordingly, Section 83 of the 1970 Act provides certain policy-driven justifications for India’s working requirements, explaining:</p>
<blockquote>“that patents are granted to encourage inventions and to secure that the inventions are <i>worked</i> in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay; [and]</blockquote>
<blockquote>that they are not granted merely to enable patentees to enjoy a monopoly for the <i>importation</i> of the patented article[.]”<a name="_ftnref45"></a></blockquote>
<p style="text-align: justify; ">These provisions make clear that working a patent in India is both an important policy goal and consists of something more than importation of the patented article into India. Some additional knowledge transfer must occur so that manufacturing of other steps necessary for commercialization are carried out in India.</p>
<p>Following the Ayyangar Report’s recommendations, Section 84(1) of the 1970 Act provided for compulsory licensing of patents as follows:</p>
<blockquote>“At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller<a name="_ftnref46"></a> alleging that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price and praying for the grant of a compulsory licence to work the patented invention.”<a name="_ftnref47"></a></blockquote>
<p style="text-align: justify; ">These requirements, particularly the availability of the patented article to the public at a “reasonable price,” seek to address issues raised in the debate over access to medicines, and particularly the high pricing maintained by many Western pharmaceutical firms in developing countries.<a name="_ftnref48"></a></p>
<p style="text-align: justify; ">However, working of patents more generally is incorporated into the compulsory licensing regime through Section 90, which clarifies when the “reasonable requirements of the public” will be deemed not to have been satisfied.<a name="_ftnref49"></a> In particular, Section 90(c) specifies that, for purposes of compulsory licensing under Section 84, “the reasonable requirements of the public shall be deemed not to have been satisfied Ö if the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable[.]”<a name="_ftnref50"></a> Thus, local working of patents is tied to the public interest and has become express grounds for requesting a compulsory license in India.</p>
<p style="text-align: justify; ">In addition to giving applicants the right to seek a compulsory license under non-worked patents, the 1970 Act also gave the Controller the power to <i>revoke</i> a patent on the grounds that the reasonable requirements of the public were not being satisfied or the patented invention was not available to the public at a reasonable price.<a name="_ftnref51"></a> Under Section 89(1), any interested person could apply to the Controller for such an order of revocation no earlier than two years following the grant of the first compulsory license under the relevant patent.<a name="_ftnref52"></a></p>
<h5><a name="IB3"></a>3. India’s Current Working Requirement</h5>
<p style="text-align: justify; ">India became a member of the World Trade Organization on January 1, 1995, also making India a party to the TRIPS Agreement.<a name="_ftnref53"></a> In order to reconcile the 1970 Act with the TRIPS Agreement, India amended its Patents Act in 1999, 2002, and 2005.<a name="_ftnref54"></a> Most relevant to this Article, the 2002 amendments modified India’s compulsory licensing and working requirements.<a name="_ftnref55"></a></p>
<p style="text-align: justify; ">India’s amended Patents Act retains strong working requirements, which permit the Controller to revoke unworked patents.<a name="_ftnref56"></a> Section 83 of the Act, as amended in 2002, provides several additional justifications for India’s patent working requirement not contemplated in earlier versions of the Act. For example, the 2002 amendments recognize that patents are intended to support the “transfer and dissemination of technology . . . in a manner conducive [sic] to social and economic welfare.”<a name="_ftnref57"></a> Several of the new justifications emphasize that patents should support, and not impair, the public interest, particularly “in sectors of vital importance for socio-economic and technological development of India.”<a name="_ftnref58"></a></p>
<p style="text-align: justify; ">Against this backdrop, the amended Act explicitly makes compulsory licenses available for non-worked patents. Section 89 explains that one of the “general purposes” of compulsory licenses is to ensure that “patented inventions are worked on a commercial scale in the territory of India without undue delay and to the fullest extent that is reasonably practicable.”<a name="_ftnref59"></a> The amended Act expanded Section 84(1), which authorizes third parties to seek compulsory licenses, to include as an express basis for seeking a compulsory license “that the patented invention <i>is not worked</i> in the territory of India.”<a name="_ftnref60"></a></p>
<p style="text-align: justify; ">Thus, new section 84(1)(c) establishes working of a patent as an independent ground for seeking a compulsory license, in addition to the grounds under sections 84(a) and (b) that the patented technology fails to reasonably meet public needs. This approach contrasts with the original 1970 formulation, discussed above, in which non-working of a patent formed a basis for seeking a compulsory license, but only as an element of the “reasonable requirements of the public,” rather than an independent ground in itself.<a name="_ftnref61"></a></p>
<p>Section 84(6) specifies factors that the Controller must take into account when considering an application for a compulsory license, including:</p>
<blockquote>(i) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;</blockquote>
<blockquote>(ii) the ability of the applicant to work the invention to the public advantage;</blockquote>
<blockquote>(iii) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted;</blockquote>
<blockquote>(iv) as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit [i.e., not ordinarily exceeding a period of six months] . . . . <a name="_ftnref62"></a></blockquote>
<p style="text-align: justify; ">Section 84(6) appears to represent a concession to patent holders, making clear that compulsory licenses will only be granted to applicants that are able to exploit the licensed patent rights in a manner that is likely to remedy the failure of the patent holder to work the patent.</p>
<p style="text-align: justify; ">While a formal definition of working is not provided under the statute, the language of section 83 suggests that the patented invention must be manufactured locally to the extent possible and that importation would be acceptable only if local manufacturing is unreasonable.<a name="_ftnref63"></a> Additionally, the statutory language suggests that if importation is necessary, only the patent holder or its chosen licensees may import the patented invention.<a name="_ftnref64"></a> The statute also fails to establish any circumstances that may be excused from India’s patent working requirement. This omission may have been intentional, perhaps suggesting that any technology that is worth patenting in India should also be capable of being worked in India.</p>
<p style="text-align: justify; ">In short, India’s patent working requirement is intended to be taken seriously. The penalties for failing to work a patent include the issuance of a compulsory license beginning three years after patent issuance, and if that does not fulfill public requirements for the patented article, possible revocation of the patent. Moreover, there is evidence that Indian courts may be reluctant to grant injunctive relief to patent holders that do not work their patents.<a name="_ftnref65"></a></p>
<h4><a name="IC"></a>C. The Indian Working Requirement and Natco Pharma Limited v. Bayer Corporation</h4>
<p style="text-align: justify; ">India’s patent working requirement was featured prominently in Natco’s recent compulsory license request with respect to Bayer’s Indian patent covering sorefanib tosylate, a kidney and liver cancer drug marketed by Bayer as NexavarTM. Bayer obtained an Indian patent covering Nexavar in 2008.<a name="_ftnref66"></a> Despite Bayer’s estimate that more than 8,800 patients in India were eligible to take the drug, its imports were sufficient to supply only 200 patients.<a name="_ftnref67"></a> Moreover, Bayer priced a monthly dose of the drug at more than 280,000 Rupees (approximately US$5,608), a price unaffordable to the vast majority of Indians.<a name="_ftnref68"></a> In response, Natco, an Indian generic drug manufacturer, attempted to negotiate a license with Bayer to manufacture and sell Nexavar in India.<a name="_ftnref69"></a> However, when negotiations were unsuccessful, Natco applied to the Drug Controller General of India for regulatory approval to manufacture a generic version of Nexavar in India.<a name="_ftnref70"></a> The approval was granted.<a name="_ftnref71"></a></p>
<p style="text-align: justify; ">Natco then petitioned the Controller of Patents under section 84 of the Patents Act for a compulsory license to manufacture a generic version of Nexavar.<a name="_ftnref72"></a> Natco offered several justifications in support of its application for a compulsory license, including Nexavar’s high cost and limited availability in India.<a name="_ftnref73"></a> In addition, Natco argued that Bayer had failed to work its patent in India within three years of its issuance, as required under section 84(1)(c) of the Patents Act. Specifically, Natco argued that “[t]he patented product is being imported into India and hence the product is not worked in the territory of India to the fullest extent that is reasonably practicable.”<a name="_ftnref74"></a> Additionally, Natco argued that Bayer faced “no hurdle[s] preventing [it] from working the Patent in India” because Bayer already had “manufacturing facilities in India for several products.”<a name="_ftnref75"></a></p>
<p style="text-align: justify; ">Bayer responded that it actively imported Nexavar into India, which demonstrated sufficient working, and argued that India’s working requirement did not require manufacture of the patented product in India.<a name="_ftnref76"></a> In evaluating Natco’s petition, the Controller considered the legislature’s intent, the Paris Convention, the TRIPS Agreement, and India’s Patents Act.<a name="_ftnref77"></a> In view of these authorities, the Controller interpreted the term “worked” to mean that the patented invention must be manufactured or licensed within India, reasoning that “[u]nless such an opportunity for technological capacity building domestically is provided to the Indian public, they will be at a loss as they will not be empowered to utilise [sic] the patented invention, after the patent right expires.”<a name="_ftnref78"></a> Under this interpretation, the Controller concluded that Bayer had not worked its patent in India since importation is not sufficient to constitute “working” a patent.<a name="_ftnref79"></a> Accordingly, in 2012 the Controller issued a compulsory license to Natco under Bayer’s patent covering Nexavar.<a name="_ftnref80"></a></p>
<p style="text-align: justify; ">Bayer unsuccessfully appealed the Controller’s decision to the Indian Intellectual Property Appellate Board (IPAB).<a name="_ftnref81"></a> The IPAB affirmed the Controller’s decision, but disagreed with the Controller’s interpretation of the term “worked.”<a name="_ftnref82"></a> Instead of ruling that working categorically excludes importation of the patented product into India, the IPAB concluded that determining whether a patented invention is worked must be considered on a case-by-case basis.<a name="_ftnref83"></a> Thus, the term “worked” does not necessarily exclude importation, but it also does not strictly require manufacturing in India.<a name="_ftnref84"></a></p>
<p style="text-align: justify; ">In affirming the decision of the IPAB, the Bombay High Court opined that “[m]anufacture in all cases may not be necessary to establish working in India[.]”<a name="_ftnref85"></a> However, the court implied that working a patent <i>without</i> local manufacture could be a high hurdle to clear, reasoning that the patent holder must then “establish those reasons which makes it impossible/prohibitive for it to manufacture the patented drug in India.”<a name="_ftnref86"></a> It is only when the patent holder satisfies the authorities that “the patented invention could not be manufactured in India” that it can be considered worked by import.<a name="_ftnref87"></a></p>
<p style="text-align: justify; ">Apart from the working requirement, the Bombay court focused on whether Bayer had reasonably satisfied the requirements of the public, recognizing that those requirements might differ depending on the type of product covered by the patent.<a name="_ftnref88"></a> Thus, when assessing whether demand for the patented article was met to an “adequate extent,” the considerations pertaining, for example, to a luxury article would vary significantly from those pertaining to a lifesaving medicine. In the case of medicines, the court reasoned, meeting public demand to an adequate extent should be deemed to mean it is available to 100% of the market: “Medicine has to be made available to every patient and this cannot be deprived/sacrificed at the altar of rights of [the] patent holder.”<a name="_ftnref89"></a></p>
<p style="text-align: justify; ">Following Natco’s successful application for, and defense of, its compulsory license, other generic drug manufacturers sought compulsory licenses to manufacture patented pharmaceutical products in India. For example, in 2013, BDR Pharmaceuticals, Ltd., an Indian manufacturer, filed an application for a compulsory license to manufacture Bristol Myers Squibb’s anti-cancer drug dasatinib (marketed as SprycelTM),<a name="_ftnref90"></a> and the Indian Ministry of Health recommended that the Department of Industrial Policy and Promotion (DIPP) grant local manufacturers compulsory licenses for trastuzumab, a breast cancer drug marketed by Roche (HerclonTM) and Genentech (HerceptinTM) and ixabepilone (Roche’s IxempraTM).<a name="_ftnref91"></a> To date, each of these petitions has failed for various reasons other than that pertaining to dasatinib, which remains under consideration by DIPP.<a name="_ftnref92"></a></p>
<h4><a name="ID"></a>D. Form 27 and India’s Reporting Requirement</h4>
<p style="text-align: justify; ">The Indian patent working requirement under Section 84 of the Patents Act, as well as the availability of compulsory licenses for non-worked patents, is not unique to India, and other developing countries have adopted similar legal requirements.<a name="_ftnref93"></a> India has, however, enacted what appears to be a unique reporting structure associated with its patent working requirement.<a name="_ftnref94"></a> India adopted a form submission requirement as a means to regulate the patent working requirement under the India Patents Act in 1970.<a name="_ftnref95"></a>Specifically, section 146(2) of the Patents Act provides that:</p>
<blockquote style="text-align: justify; ">every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.<a name="_ftnref96"></a></blockquote>
<p style="text-align: justify; ">In support of this statutory requirement, the patent rules adopted by the Indian Ministry of Commerce and Industry provide that the required statements of working must be submitted in a prescribed format (Form 27).<a name="_ftnref97"></a> The rules also provide that such statements must be furnished to the Controller of Patents in respect of every calendar year within three months following the end of such year.<a name="_ftnref98"></a></p>
<p style="text-align: justify; ">Form 27, a template of which is appended to the 2003 version of the Indian patent rules, requires the patent holder to disclose “the extent to which the patented invention has been worked on a commercial scale in India.”<a name="_ftnref99"></a> To that end, Form 27 requires that the patent holder complete the following information:</p>
<p>The patented invention:</p>
<blockquote>(i) { } Worked { } Not worked [Tick (✓) mark the relevant box]</blockquote>
<blockquote>a. if not worked: reasons for not working and steps being taken for the working of the invention.</blockquote>
<blockquote>b. if worked: quantum and value (in Rupees), of the patented product:</blockquote>
<blockquote>manufactured in India</blockquote>
<blockquote>imported from other countries (give country wise details)</blockquote>
<blockquote>(ii) the licenses and sub-licenses granted during the year;</blockquote>
<blockquote>(iii) state whether the public requirement<a name="_ftnref100"></a> has been met partly/adequately/to the fullest extent at reasonable price.<a name="_ftnref101"></a></blockquote>
<p>Under Section 122, failing to submit a Form 27 or providing false information on the form may lead to a significant fine, imprisonment, or both.<a name="_ftnref102"></a></p>
<p style="text-align: justify; ">Though India’s working requirement first appeared in the Patents Act in 1970, it appears to have been ignored until around 2007. In 2007, the Controller first mentioned the local working of patented inventions in his annual report.<a name="_ftnref103"></a> The reports provided by the Controller between 2007 and 2009 indicate that, on average, less than 15 percent of Indian patents were being worked commercially.<a name="_ftnref104"></a> In 2009, 2013 and 2015, the Controller issued public notices calling on patent owners to comply with their obligations to file statements of working on Form 27.<a name="_ftnref105"></a></p>
<p style="text-align: justify; ">While the penalties for failing to furnish information via Form 27 are steep, potentially resulting in fines or imprisonment,<a name="_ftnref106"></a> local critics claim that many patent holders fail to make the required filings and that the Indian government has never taken meaningful action to penalize this non-compliance.<a name="_ftnref107"></a></p>
<p style="text-align: justify; ">On February 12 2013, the Indian Patent Office announced plans to make Form 27 submissions for the year 2012 available to the public via the IPO website.<a name="_ftnref108"></a> As discussed in Part II.A below, that effort has been met with limited success.</p>
<h4><a name="IE"></a>E. Theory and Criticism of Form 27</h4>
<p style="text-align: justify; ">There is little legislative or administrative history explaining the genesis of India’s unique Form 27 requirement. On one hand, a requirement that the details of patent working be disclosed by patent holders supports the goal of making unworked patents available for compulsory licensing in India, both to promote economic development and public access to patented products. A public registry of Forms 27 could also shift enforcement of India’s working requirement from the IPO and Controller to private sector entities with the greatest incentive to monitor the working of patents in their respective industries. This shift could relieve India’s resource-strapped administrative agencies of a potentially significant policing function, one that it does not appear they were actively enforcing in any event.</p>
<p style="text-align: justify; ">However, it is not clear that these goals are well served by the current Form 27 framework, which has been criticized by a number of local commentators.<a name="_ftnref109"></a> For example, the IPAB ruled in <i>Natco</i> that the term worked must be decided on a case-by-case basis. How, then, should patent holders answer the first question posed in Form 27 and its sub-questions? How is a patent holder to know whether importation or licensing in a certain case will qualify as working a patent in India? If the Form is intended to increase transparency and certainty regarding the working of patents in India, it is hindered in so doing by the lack of a formal definition of working. This lack of clarity affects both patent holders, who are less able to order their affairs so as to comply with statutory working requirements, as well as potential compulsory licensees, who lack a clear assurance of when a compulsory license petition will be successful.</p>
<p style="text-align: justify; ">Commentators have raised a variety of additional critiques of the Form 27 framework. The U.S.-based Intellectual Property Owners Association, in a formal 2014 submission to the U.S. Trade Representative, has referred to the Form 27 process as “highly burdensome” and warns that the information disclosed in publicly-accessible forms could “result in even greater pressure on Indian authorities to compulsory license [patented] products.”<a name="_ftnref110"></a>Moreover, the association argues that Form 27 does not adequately recognize that some patents may be practiced by multiple products, or that multiple patents may be practiced by a single product.<a name="_ftnref111"></a> Thus, it may be unrealistic for patent holders to attribute a “specific commercial value” to specific patented features of complex technologies.<a name="_ftnref112"></a></p>
<p style="text-align: justify; ">Additionally, a number of Indian practitioners have raised concerns that the public disclosure of confidential plans for working patents through Form 27 may jeopardize or destroy valuable trade secrets and proprietary information.<a name="_ftnref113"></a> This threat could cause patent holders to disclose as little specific or valuable information as possible in their Form 27 filings, a result that is suggested by the findings discussed in Part III below.</p>
<p style="text-align: justify; ">Based on studies of filed Forms 27, Professor Shamnad Basheer,<a name="_ftnref114"></a> has concluded that India’s local working Form 27 submission requirements are not being taken seriously, particularly by international pharmaceutical companies.<a name="_ftnref115"></a> As a result, in 2015 Professor Basheer initiated public interest litigation in the High Court of Delhi against the Indian government for failure to comply with India’s patent laws.<a name="_ftnref116"></a> The suit seeks a judicial order compelling the Indian government “to enforce norms relating to the disclosure of ‘commercial working’ of patents by patentees and licensees” and to take action “against errant patentees and licensees for failure to comply with the mandate.”<a name="_ftnref117"></a> In 2016 an Indian patent attorney, Narendra Reddy Thappeta, filed an application to intervene in Basheer’s public interest suit, among other things, in order to raise issues regarding the difficulty of complying with Form 27 requirement for information and communication technology providers.<a name="_ftnref118"></a></p>
<p style="text-align: justify; ">Despite its perceived problems, Form 27 has proven useful in Indian proceedings. Notably, the information disclosed in Bayer’s Form 27 filings played an important role in the <i>Natco</i> case by helping to establish the low number of patients having access to the drug.<a name="_ftnref119"></a> Basheer refers to the working requirement as “a central pillar of the Indian patent regime” and views the disclosure requirements of Form 27 as essential tools to ensure that needed information is made public.<a name="_ftnref120"></a></p>
<h3><a name="II"></a>II. Empirical Study of Indian Form 27 Disclosures in the Mobile Device Industry</h3>
<p style="text-align: justify; ">In order to gain a better understanding of India’s patent working requirement, particularly patent holders’ compliance with the statutory requirement to declare information about the working of their patents through Form 27, we conducted an empirical study of all available Form 27 submissions for Indian patents in the mobile device sector. In this Part, we describe the objectives, background and methodology of this study.</p>
<h4><a name="IIA"></a>A. Background: Existing Data and Studies</h4>
<p style="text-align: justify; ">Every year, the Controller publishes an Annual Report containing statistics relating to patent filings in India. Since 2010, this report has contained data relating to Form 27 filings. This data indicates that a significant number of patent holders fail to file Form 27 as required. Below is a summary of this data as derived from the Controller’s Annual Reports from 2010 to 2016:</p>
<p><i>Table 1</i></p>
<p><i>Indian Controller of Patents Form 27 Filing Data (2010-2016)</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="500" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Table_Body_1.png.pagespeed.ic.AmWItQDjL-.webp" width="500" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; "><span>Under the Patents Act, a Form 27 must be filed every year with respect to every issued patent in India. Accordingly, the discrepancy between the number of patents in force for a given year and the number of Forms 27 filed likely indicates non-compliance with the filing requirement. Interestingly, it appears that instances of non-compliance dropped noticeably in years immediately after the Controller issued its public reminders to file Form 27 in December 2013, February 2013 and early 2015.</span><a name="_ftnref122"></a><span> Even so, compliance has not been complete even in these years.</span></p>
<p style="text-align: justify; ">As noted above, Professor Shamnad Basheer has conducted two studies of Form 27 compliance in India. The first study, released in April 2011, focused on the pharmaceutical sector.<a name="_ftnref123"></a> The researchers selected seven pharmaceutical products directed at either cancer or hepatitis, all of which were subject either to Indian litigation or patent office oppositions and were patented in India between 2006 and 2008. They then collected Form 27 filings relating to each of these patents through a series of Right to Information (RTI) petitions to the Indian Patent Office (IPO).<a name="_ftnref124"></a> Based on the Forms produced by the IPO in response to these requests, the researchers found significant non-compliance with Form 27 filing requirements: some firms failed to file forms in some years, while some forms that were filed were incomplete.<a name="_ftnref125"></a></p>
<p style="text-align: justify; ">Professor Basheer’s second study had a broader scope, covering a total of 141 patents: 52 patents held by 13 firms in the pharmaceutical sector, 52 patents held by 7 firms in the telecommunications sector, and 37 patents held by 4 institutions which are claimed to have arisen from publicly-financed research.<a name="_ftnref126"></a> The researchers used series of RTI petitions to collect a total of 263 Forms 27 corresponding to these patents filed between 2009 and 2012.<a name="_ftnref127"></a></p>
<p style="text-align: justify; ">Based on a total of 141 patents, full compliance with Form 27 filing requirements would have yielded 423 Forms 27 over the three-year period studied. The total of 263 Forms identified indicates a non-compliance ratio of approximately 38%,<a name="_ftnref128"></a> assuming that all filed forms were produced by the IPO. A review of the reported data<a name="_ftnref129"></a> indicates that some firms, particularly in the pharmaceutical sector, were assiduous in filing Forms 27. For example, Genentech and Janssen Pharmaceuticals, with two patents each, each filed six Forms 27, suggesting full compliance. Other firms, however, fell far short of this measure. Apple, for example, with four patents, filed only one Form.</p>
<p style="text-align: justify; ">In addition to raw filing statistics, Prof. Basheer investigates the quality of the disclosures made in individual Forms 27. He finds that significant numbers of filed Forms “were grossly incomplete, incomprehensible or inaccurate.”<a name="_ftnref130"></a> For instance, numerous forms failed to indicate how patents were being worked or the quantity, value or place of manufacture of patented products as required by the Form.<a name="_ftnref131"></a> In addition, of forty-two Forms that disclosed non-working of a patent, twenty-eight (65%) failed to offer any reason for non-working.<a name="_ftnref132"></a> Though the raw data underlying these conclusions does not appear to be publicly available, choice excerpts from a few Forms are offered.</p>
<p style="text-align: justify; ">While the prior studies cited above suggest that there are substantial non-compliance issues with Form 27 practice in India, additional data is required to develop a more complete understanding of this issue. The Controller’s annual report data is provided only at a gross level and lacks any detail regarding compliance. Prof. Basheer’s pioneering studies, while first alerting the public to the problems of non-compliance, cover only small, non-random samples of patents and end prior to the general online availability of Forms 27.</p>
<h4><a name="IIB"></a>B. Methodology</h4>
<p style="text-align: justify; ">In this study, we sought to assess annual Form 27 submissions across a comprehensive set of patents and a substantial time frame. To do so, we utilized a set of 4,052 Indian patents identified by Contreras and LakshanÈ as of February 2015 in a prior study of the Indian mobile device patent landscape (Landscape Study).<a name="_ftnref133"></a> Another 367 patents pertaining to mobile device technology, which were not included in the original Landscape Study, were also identified by an independent contracted search firm. In the aggregate, we analyzed 4,419 Indian patents issued as of February 2015 in the mobile device sector, which we believe to represent the large majority of issued Indian patents in this sector as of the date selected.</p>
<p style="text-align: justify; ">We identified Form 27 filings with respect to each such patent through searches<a name="_ftnref134"></a> of two public online databases maintained by the Indian Patent Office: Indian Patent Advanced Search System (“InPASS”) and Indian Patent Information Retrieval System (“IPAIRS”).<a name="_ftnref135"></a> We manually eliminated duplicate results obtained from these two databases.</p>
<p style="text-align: justify; ">Our initial searches in 2015 yielded Form 27 submissions for only 1,999 out of 4,419 patents. These searches yielded no Forms 27 for some firms known to be significant patent holders in the mobile devices industry. To attempt to locate the missing forms, LakshanÈ, through the Centre for Internet and Society (CIS), submitted two formal requests to the IPO located in Mumbai under the Indian Right to Information (“RTI”) Act of 2005. The first RTI application was submitted on June 10, 2015, requesting Form 27 information for over 800 patents.<a name="_ftnref136"></a> On June 17, the IPO replied with generic instructions on how to find Form 27 submissions online.<a name="_ftnref137"></a> A second RTI application was filed on March 11, 2016.<a name="_ftnref138"></a> The second request sought Form 27 filings pertaining to 61 of the remaining patents.<a name="_ftnref139"></a> These 61 patents were selected to represent a sample of patents held by the full cross-section of patent holders identified in the Landscape Study. In April 2016, the IPO replied that, due to internal resource constraints, it could only provide CIS with Forms 27 for eleven (11) of the requested patents.<a name="_ftnref140"></a></p>
<p style="text-align: justify; ">Nevertheless, a few days after IPO’s reply, Form 27 submissions pertaining to patents in the Landscape Study started appearing on InPASS and IPAIRS. We repeated the search for Forms 27 corresponding to all 4,419 patents in our dataset in August 2016 and obtained a total of 4,935 Forms 27 corresponding to a total of 3,126 patents (an increase of 1,127 patents over the initial search).</p>
<p style="text-align: justify; ">All Forms 27 that we accessed were downloaded as PDF files or original image files and manually entered into a text-searchable spreadsheet maintained at CIS.<a name="_ftnref141"></a> All information from the Forms 27 was transcribed into the spreadsheet, including all textual descriptions of patent working and licensing. The results were then analyzed as described in Part III.A below.</p>
<h4><a name="IIC"></a>C. Limitations</h4>
<p style="text-align: justify; ">The present study was limited by the technical capabilities of the IPO’s online Form 27 repository.<a name="_ftnref142"></a> As described above, we found significant gaps in posted Forms 27 in our initial search, and it took a formal RTI application to spur the IPO to upload additional forms. Yet, we still identified 1,400 fewer Forms 27 than issued patents in the mobile devices category. The degree to which these missing forms arise from abandoned or expired patents, or additional failures of the IPO to upload filed forms, is unclear. Other than the IPO web site, there is no practical way to identify or access Forms 27 filed with the IPO. Technical issues with the InPASS and IPAIRS databases were constant challenges during this study. The databases were frequently unavailable, produced conflicting results, and were subject to numerous runtime errors and failures.</p>
<p style="text-align: justify; ">Despite these technical challenges, we believe that we have identified a large segment of filed Forms 27 covering Indian patents held by all major patent holders in the mobile device sector. We hope that this study will further encourage the IPO to improve the regularity and reliability of its Form 27 database.</p>
<h3><a name="III"></a>III. Findings</h3>
<p>In this Section, we describe the findings of our empirical collection analysis of Forms 27 pertaining to Indian patents in the mobile device sector.</p>
<h4><a name="IIIA"></a>A. Aggregated Data ñ Forms Found and Missing</h4>
<p style="text-align: justify; ">As noted above, we used a dataset comprising 4,419 Indian patents in the mobile device sector issued as of February 2015. Of these, at least 107 patents were likely expired prior to the date on which a Form 27 would have been filed,<a name="_ftnref143"></a> leaving 4,312 patents for which at least one Form 27 could have been filed.</p>
<p style="text-align: justify; ">We were able to identify and obtain a total of 4,916 valid Forms 27<a name="_ftnref144"></a>which corresponded to 3,126 of these patents, leaving 1,186 Indian patents for which a Form 27 could have been filed, but was not found. This total represents 27.5% of the patents for which at least one Form 27 could have been filed: a significant portion of the total number of patents in the field, and within the general range of missing Forms identified by both the Controller and Basheer (2015).</p>
<p style="text-align: justify; ">Based on the year of grant of each of the 4,312 patents identified in the mobile device sector as to which a Form 27 could have been filed, we determined that a total of 24,528 Forms 27 should have been filed with respect to these patents.<a name="_ftnref145"></a> This figure represents the sum of total Forms 27 that could have been filed for each such patent, which ranges from a low of one to a high of eight Forms 27 per patent. In our sample, no single patent was associated with more than five Forms 27. As noted above, we obtained a total of 4,935 Forms 27 filed with respect to 3,126 patents, representing only 20.1% of the total Forms 27 that should have been filed and made available with respect to the 4,312 patents studied. Figure 1 below compares the number of Forms 27 filed in each year since 2009 with the number of Forms 27 that should have been filed each year based on the number of mobile device patents in force from year to year.</p>
<p><i>Figure 1</i></p>
<p><i>Actual vs. Required Form 27 Filings, by year </i><i>(based on number of mobile device patents in force)</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="Graph of Forms Filed in 2009-2016" height="500" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/400x500xNYU_JIPEL_Vol-7-No-1_1_Contreras_Graphic_1.png.pagespeed.ic.FfVWJPa0FL.webp" width="400" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; ">As shown in Figure 1, Form 27 filings have fallen well below the required number every year. In 2009, the first year in which Forms 27 were filed in any numbers, only 36 Forms were filed, representing only 2.8% of the 1,302 Forms that should have been filed based on the number of mobile device patents in force that year. By 2013, the number of Forms filed rose to 2,389, representing 70.7% of the 3,379 Forms that should have been filed. This ratio declined again in 2014 to 1,392 Forms out of a total of 3,639 (38.3%). Data for 2015 and 2016 are likely incomplete given the February 2015 cutoff for patents in our study. We also expect that many of the 1,186 “missing” Forms 27 were filed more recently and have not yet been uploaded by the IPO in a searchable format.</p>
<p>One possible explanation for the beginning of filings in 2009 and the significant jump in filings in 2013 may be the Controller’s public notifications of the need to file Forms 27 in 2009 and 2013.<a name="_ftnref146"></a></p>
<p>Figure 2 below illustrates the number of issued <i>patents</i> in the mobile device sector for which Forms 27 were found and missing, categorized by patent holder (assignee). Complete data is contained in the Appendix, Table A1.</p>
<p><i>Figure 2</i></p>
<p><i>Forms 27 (Identified and Missing) Per Assignee</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="500" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/500x500xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Image_Body_Figure_2_.png.pagespeed.ic.BrOpEsIv3V.webp" width="500" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; ">As shown in Figure 2, missing Forms 27 were distributed among most holders of Indian patents in the mobile device sector. Of the 40 firms identified as holding issued mobile device patents, Forms were missing for 37 of these (92.5%). In most cases, more Forms 27 were found than missing. In a few cases, however (most notably Philips), more Forms 27 were missing than found. In the case of four large patent holders (Qualcomm, Siemens, Philips and Samsung), more than 100 Forms 27 were missing. Forms 27 were missing for patents with issuance dates ranging from 2004 to 2015.<a name="_ftnref147"></a></p>
<p style="text-align: justify; ">There are several possible reasons that Forms 27 may not have been identified for all issued Indian patents. One possibility, is non-compliance by the patent holder. This is likely the case with respect to the early years (2009-2010), when filing requirements were not yet normalized. However, in more recent years, the following factors suggest that patent holder non-compliance is <i>not</i> a significant cause of missing Forms 27 in the IPO database: (1) Forms 27 were missing for nearly all patent holders across the board, (2) large patent holders filed hundreds of Forms 27 and were clearly aware of their filing requirements, (3) the incremental cost of filing Forms 27 is minimal, and (4) in most cases, large patent holders simply copy text from one form to another (not in itself ideal, see below), requiring little incremental effort to file additional forms. Rather, given our experience with IPO during this study (see Methodology, above), we expect that the missing forms are due largely to the IPO’s failure to upload Forms 27 to its web site in a timely and reliable manner, and the dropping of Forms 27 once uploaded.</p>
<h4><a name="IIIB"></a>B. Working Status</h4>
<p style="text-align: justify; ">As noted above, we reviewed 4,935 Forms 27 filed with respect to 3,126 patents in the mobile device sector. Figure 3 below illustrates the number of patents for which Forms 27 were filed and which the assignee designated that the patent was worked versus not worked (or, in a few cases, made no indication of working status).<a name="_ftnref148"></a></p>
<p><i>Figure 3</i></p>
<p><i>Working Status, by Assignee</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="500" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/500x500xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Image_Body_Figure_3.png.pagespeed.ic.-INHJW2qMm.webp" width="500" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; ">These results suggest that different patentees have developed significantly different strategies regarding their Form 27 filings. For example, Qualcomm, the largest holder of patents in the mobile device sector (1,298 patents, 993 of which have associated Forms 27), represents that nearly all of its patents (986, 99.3%) are being worked. Samsung, on the other hand, holds the second-highest number of patents (551 patents, 430 of which have associated Forms 27). Yet Samsung claims that it is working only 12 of its patents (2.3%). Clearly, these two patentees are employing different strategies regarding the declaration of working. A glance at Figure 3 suggests that some patentees such as RIM (now renamed Blackberry) follow Qualcomm’s approach of declaring most patents to be worked, while others (Ericsson, LG, Motorola, Panasonic, Philips, Siemens) follow Samsung’s approach and declare most patents not to be worked.</p>
<p style="text-align: justify; ">Of course, one might reason that there may be some difference between the patents themselves, and that the patentees’ declarations may simply reflect the fact that some firms’ patents are used more pervasively in India. This conjecture, however, is unlikely. Most of the patentees studied are large multinationals whose patents cover the same products. Many of these patents are declared as essential to the same technical standards. Moreover, given the generally ambiguous evidence proffered by patentees supporting their designated working status (see Part III.C, below), we doubt there are substantial enough differences among the patentees’ portfolios to account for the significant divide in declarations of working status.</p>
<h4><a name="IIIC"></a>C. Descriptive Responses</h4>
<p style="text-align: justify; ">As noted above,<a name="_ftnref149"></a> Form 27 requires the patentee to disclose whether or not a patent is being worked in India. If so, the patentee must disclose the number and amount of revenue attributable to products covered by the patent that are manufactured in India and are imported from other countries. If the patent is not being worked, the patentee must explain why and describe what steps are being taken to work the invention. In both cases, the patentee must also identify licenses and sublicenses granted and state how it is meeting public demand for products at a reasonable price.</p>
<p style="text-align: justify; ">As first observed by Basheer, there is widespread non-compliance with these reporting and disclosure requirements.<a name="_ftnref150"></a> We largely confirm this result. Below is a summary of our findings with respect to the descriptive responses for the 4,935 Forms 27 that we reviewed.</p>
<h5><a name="IIIC1"></a>1. Working Status Not Disclosed</h5>
<p style="text-align: justify; ">For a surprising number of Forms 27 (95 or 3%), the working status of the relevant patent was not designated (i.e., neither the box for “worked” nor “not worked” was checked by the patentee). Table 1 below shows the patentees that filed Forms 27 in this manner.</p>
<p><i>Table 1</i></p>
<p><i>Forms 27 Failing to Disclose Working Status</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="400" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Table_Body_2.png.pagespeed.ic.vT6PSYutGl.webp" width="400" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; ">Clearly, these sophisticated multinational firms understood the filing requirements for Form 27 and, in most cases, filed additional Forms 27 that did indicate whether the relevant patent was or was not being worked. Thus, the principal reason for filing a Form 27 without designating its working status appears to be the patentee’s uncertainty regarding the patent’s working status in India.</p>
<p style="text-align: justify; ">Illustrating this point, Motorola declares in several of its Forms of this nature that “[i]t is not possible to determine accurately whether the patented invention has been worked in India or not, due to the nature of the invention.”<a name="_ftnref151"></a> While Motorola fails to explain how “the nature of the invention” makes it impossible to determine whether or not the patent is being worked, it uses this litany in most of its Forms 27 that fail to disclose working status. Ericsson adopts a slightly different approach, stating that while it is actively seeking opportunities to work the patent, there may have been some uses of the patented technology.<a name="_ftnref152"></a> Thus, again, it is uncertain whether the patent is being worked or not. Presumably, these patentees felt that it was preferable to file an incomplete, rather than incorrect, Form 27.</p>
<p style="text-align: justify; ">Interestingly, most patentees never revised their working non-designations over the years. Thus, if a patent was not designated as worked or not worked in the first year a Form 27 was filed, subsequent filings for that patent typically duplicated the language of prior years’ filings. One exception appears to be Google, which acquired Motorola’s patent portfolio in 2012. For Indian Patent No. 243210 issuing in 2010, Motorola filed Forms 27 in 2010 and 2011 without indicating whether or not the patent was worked. However, in 2013, Google/Motorola filed a Form 27 for the same patent indicating that it was <i>not</i> worked.</p>
<p>Google has elected to opt for non-working when it is uncertain of the working status of a patent. For example, the following qualified language is used in several Forms in which Google indicates that a patent is not being worked:</p>
<blockquote style="text-align: justify; ">Based on a reasonable investigation, it is Google’s belief that the patent has not been worked in India. The uncertainty arises because Google’s products and services are covered by numerous patents belonging to Google’s very large worldwide patent portfolio, and Google does not routinely keep track of which individual patent is being employed in Google’s products and services. The present statement is being filed on the basis of Google’s current estimation, but Google requests opportunities to revise the statement, should it transpire at a later date that the patent is being worked contrary to their present belief.<a name="_ftnref153"></a></blockquote>
<h5><a name="IIIC2"></a>2. Patents Not Worked</h5>
<p style="text-align: justify; ">We examined a total of 2,380 Forms 27 that indicated the relevant patents were not being worked. If a patent is specified as not being worked, the patentee must disclose the reasons for the failure to work the patent, and describe what steps are being taken to work the invention.</p>
<p style="text-align: justify; ">In a small number of cases, the patentee offered some plausible explanation for non-working of the patent. The most common of these, claimed by in Ericsson in thirty-six Forms 27, was that the underlying technology was still under development,<a name="_ftnref154"></a> making working impossible, at least until that development was completed. In a handful of other Forms 27 (6), Ericsson and Nokia have claimed that a patent was not being worked because it covered a technology awaiting approval or endorsement by a standards body.<a name="_ftnref155"></a> In the vast majority of cases, however, no explanation is offered as to why a particular patent is not being worked.</p>
<p style="text-align: justify; ">With respect to disclosure of the patentees’ plans for working a non-worked patent, most simply include stock language stating that they are “actively seeking” or “on the lookout for” commercial working opportunities in the future.<a name="_ftnref156"></a> Alcatel-Lucent adopted an even more passive and non-specific stance toward its plans to work patents, stating in numerous Forms 27 (applicable to 29 patents) that “as and when there is a specific requirement, the patent will be worked.”<a name="_ftnref157"></a></p>
<h5><a name="IIIC3"></a>3. Varied Interpretations of Working</h5>
<p style="text-align: justify; ">We reviewed 2,425 Forms 27 that listed the subject patent as being worked. In such cases, the patentee must disclose the number and amount of revenue attributable to products covered by the patent, whether manufactured in India or imported from other countries. A tiny percentage of the Forms 27 that we reviewed provided this information in the form requested. As we discuss in our conclusions, below, it is likely that the format of the required response is simply unsuitable for complex products such as mobile devices. Below we summarize and classify the types of responses that patentees offered regarding the working of their patents.</p>
<p style="text-align: justify; "><i>a. Specific Information</i> ñ Very few Forms 27 actually provide the specific product volume and value information required by the Form. The only patentee that provided the specific information required by Form 27 was Panasonic, which, with respect to the only two patents that it claimed to work (of a total of 66 Indian patents as to which a Form 27 was found), listed specific product volumes and values.<a name="_ftnref158"></a></p>
<p style="text-align: justify; ">Other patentees disclosed specifics regarding the technical details of their worked patents, but declined to provide product volume and value information. For example, Ericsson discloses: “the stated patent covers a specific detail of data transmission to a mobile in a GSM or WCDMA mobile network where said transmission of data is not performed if the mobile has not enough battery capacity left for the transfer.”<a name="_ftnref159"></a> Ericsson goes on, however, to explain that because this patented technology is intended to be used in conjunction with other patented technologies, it is not possible to provide the financial value of the worked patent “in isolation.”<a name="_ftnref160"></a> Oracle also adopts this approach of offering specific product information, while declining to estimate associated sales volume or revenue.<a name="_ftnref161"></a></p>
<p style="text-align: justify; "><i>b. Relevance to a Standard</i> ñ In several cases, a patentee describes its patented invention by reference to an industry standard. For example, Nokia-Siemens utilize the following description for one patent that is allegedly worked: “Invention relevant for IEEE 802.16-2009 and IEEE 802.16-2011 standard.”<a name="_ftnref162"></a> While the patentee offers no additional information regarding the working of the patent, the desired implication, presumably, is that the patent covers an aspect of the standard, and if the standard is implemented in products sold in India (as it likely is), then the patent is thereby worked.</p>
<p style="text-align: justify; ">Some patentees offer less specific information regarding the standards that their patents cover. For example, Ericsson states in one Form that “This patent is essential for a 3rd Generation Partnership Project (3GPP) standard and Ericsson is also, subject to reciprocity, committed to make its standard essential patents available through licensing on fair, reasonable and Non-discriminatory (FRAND) terms.”<a name="_ftnref163"></a> In this formulation, the patentee appears both to be implying working of the patent by virtue of the implicit inclusion of the standard in Indian products, and also to be making known its willingness to enter into licenses in the future on FRAND terms. This future-looking perspective, however, is not responsive to the information called for by Form 27 for patents that are allegedly being worked, and implies that the patent is not, in fact, being worked yet in India.</p>
<p style="text-align: justify; "><i>c. Indian Licensees</i> ñ Some licensees, Qualcomm in particular, disclose that they have licensed their patents to Indian firms. These licenses are disclosed in Qualcomm’s Forms 27 for various patents.<a name="_ftnref164"></a> However, it is not clear what manufacturing or other activity is carried out by these Indian licensees. Ericsson, which has been engaged in litigation with numerous Indian and Chinese vendors of mobile devices in India, reports that it is receiving royalties from at least two of these entities under court order, though it stops short of stating that these entities are licensed under Ericsson’s patents.<a name="_ftnref165"></a></p>
<p style="text-align: justify; "><i>d. Worldwide Licensees</i> ñ In addition to Indian licensees, Qualcomm discloses that, as of 2014, it had granted worldwide CDMA-related patent licenses to more than 225 licensees around the world, and that CDMA-based devices were imported into India from “countries such as Canada, China, Finland, Germany, Italy, Japan, Korea, Switzerland, Taiwan, and the United States.”<a name="_ftnref166"></a> While Qualcomm is not specific regarding the linkage, if any, between its worldwide licensees and mobile devices sold in India, it reports that more than 37.7 million CDMA-based mobile devices were sold in India in 2014 at an average price of USD $161.94.<a name="_ftnref167"></a> And though not express, the implication of these data is that all CDMA-based mobile devices sold in India somehow utilize Qualcomm’s patented technology.</p>
<p style="text-align: justify; ">The granting of worldwide licenses raises an interesting question regarding local working of patents. As Ericsson (which claims to have executed more than 100 patent licensing agreements) explains, its global licensees are, by definition, licensed in every country, including India. Because their global license agreements “are operational in India”, the licensees are theoretically authorized to work Ericsson’s patents in India. But it is not clear that this means that the patents are <i>actually</i> being worked in India. Simply granting a worldwide patent license does not mean that the licensed patent is being worked, just as the issuance of a patent in a country does not mean that the patent is being worked in that country.</p>
<p style="text-align: justify; "><i>e. Too Big to Know</i> ñ Some patentees claim that they or their patent portfolios are simply too vast to determine how particular patents are being worked in India, or the number or value of patented products sold in India. Nokia, for example, uses the following language in 82 separate Form 27 filings: “Nokia’s products and services are typically covered by tens or hundreds of the nearly 10,000 patents in Nokia’s worldwide portfolio. Nokia does not keep records of which individual patents are being employed in each of Nokia’s products or services, and is therefore unable to report the quantum and value of its products or services which employ the patented invention.”<a name="_ftnref168"></a></p>
<p style="text-align: justify; ">In a similar vein, Ericsson notes that its patented technologies are intended to be used in combination with a large number of other technologies patented by Ericsson and others. Accordingly, “it is close to impossible to prove an indication of specific or even close to accurate financial value of the said patent in isolationÖ”<a name="_ftnref169"></a> This said, Ericsson goes on to disclose its total product sales in India (3.09 billion SEK in 2013) and also notes that it earns revenue from licensing its patents (without disclosing financial data).<a name="_ftnref170"></a></p>
<p style="text-align: justify; "><i>f. On the Lookout</i> ñ Curiously, some patentees that claim to be working their patents use the same language regarding their search for working opportunities as they and others use with respect to non-worked patents. For example, Ericsson makes this statement regarding some of the patents that it is allegedly working in India: “The patentee is in the lookout for appropriate working opportunities in a large scale although there may have been some use of the patented technology in conjunction with other patented technologies.”<a name="_ftnref171"></a> This language is uncertain and does not seem to support a claim that, to the patentee’s knowledge, the patent is actually being worked. At best, it expresses optimism toward the possibility of finding an opportunity to work the patent in the future.</p>
<p style="text-align: justify; "><i>g. Information Provided Upon Request</i> ñ Some patentees decline to provide any information about the working of their patents in Forms 27, but offer to provide this information if requested (presumably by a governmental authority).<a name="_ftnref172"></a> Some patentees further explain their hesitation to provide this information in Form 27 on the basis that the information is confidential, but commit to provide it if requested.<a name="_ftnref173"></a></p>
<p style="text-align: justify; "><i>h. Corporate PR</i> ñ Some patentees, in addition to, or in lieu of, providing information about their patents, offer general corporate information of a kind that would often be found in corporate press releases and annual reports. For example, Research in Motion offers this glowing corporate report in lieu of any information about its allegedly worked patents:</p>
<p style="text-align: justify; ">Patentee is a leading designer, manufacturer and marketer of innovative wireless solutions for the worldwide mobile communications market. Through the development of integrated hardware, software and services that support multiple wireless network standards, the patentee provides platforms and solutions for seamless access to time-sensitive information including email, phone, SMS messaging, internet and intranet-based applications. Patentee’s technology also enables a broad array of third party developers and manufacturers to enhance their products and services with wireless connectivity. Patentee’s portfolio of award-winning products, services and embedded technologies are used by thousands of organizations around the world (including in India) and include the Blackberry wireless platform, the RIM Wireless Handheld product line, software development tools, radio-modems and software/hardware licensing agreements.<a name="_ftnref174"></a></p>
<p>RIM then goes on to explain that it has so many patents that identifying how the instant patent is worked in India is impossible (see “Too Big to Know” above).</p>
<p>Ericsson likewise offers a bit of self-serving corporate history in twenty-eight different Forms 27 in which it states:</p>
<p style="text-align: justify; ">Ericsson’s history in India goes back 112 years during which period Ericsson has contributed immensely to the telecommunication field in India. Ericsson provides, maintains and services network for several major government and private operators in India. At present, Ericsson has more than 20,000 employees across 25 offices in India. Further, Ericsson has established manufacturing units, global service organization and R&D facilities in India…<a name="_ftnref175"></a></p>
<p style="text-align: justify; "><i>i. Just Don’t Know</i> ñ Some patentees simply assert that they are unable to determine information regarding working of their patents, without any explanation why. Alcatel-Lucent, for example, offers the following unsatisfying disclosure with respect to the eight patents that it claims to be working in India: “The patentee is unable to particularly determine and provide with reasonable accuracy the quantum and value of the patented invention worked in India, including its manufacture and import from other countries during the year 2014.”<a name="_ftnref176"></a></p>
<p><i>j. No Description</i> ñ Some patentees simply omit to provide any information whatsoever regarding the working of their patents, even when patents are allegedly worked.<a name="_ftnref177"></a></p>
<h5><a name="IIIC4"></a>4. Changes in Status</h5>
<p style="text-align: justify; ">While some of the “boilerplate” responses provided by patentees in their filed Forms 27 might suggest that patentees give little thought to the content of Form 27 filings, we identified a small but non-trivial number of patents (4.1%) as to which the patentee changed the working status, either from worked to not worked, or vice versa. Overall, we identified 128 instances in which the working status of a patent was changed from one year to the next. Of these, 51 went from worked to not worked, and 77 went from not worked to worked. Such changes suggest that patentees give at least some thought to the manner in which they work their patents, and seek to correct inaccurate disclosures, though these observed variances could also be attributed to changes in law firm, changes in interpretation of filing requirements or mere clerical errors and inconsistencies in filings from year to year.</p>
<p style="text-align: justify; ">In 17 cases, the status of the same patent changed <i>twice</i> over the course of three or more Forms 27. Almost all of these three-stage “flip-flops” moved from worked to not worked to worked, with the aberrant ‘not worked’ year occurring in 2013. In fact, 2013 seems to have been a popular year for changes in working status, whether because of heightened awareness, and therefore greater scrutiny of Form 27 filings due to the Controller General’s public notice of that year, or changes in interpretation of filing requirements occasioned by a widely-attended seminar or article. But whatever the cause, it seems highly unlikely that, over the course of three years, a single patent could go from being worked in India, to not being worked, to being worked again. As a result, we attribute these flip-flop changes primarily to filing errors and inconsistencies rather than genuine attempts to correct inaccurate disclosures.</p>
<p style="text-align: justify; ">Corresponding to changes in working status, patentees often changed the textual descriptions of working or non-working contained in their Forms 27. These changes usually involved adding stock language regarding working or non-working to a Form 27 that previously contained no descriptive information. However, in some cases the patentee’s descriptive text bears little relation to the purported working status of the patent. For example, as illustrated in Table 2 below, a single patentee’s disclosures with respect to two different patents across three filings employ the same textual descriptions but for <i>different</i> working status.</p>
<p><i>Table 2 </i><i>Comparison of Working Status Descriptions</i></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="500" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Table_Body_3.png.pagespeed.ic.95TVjrA-CV.webp" width="400" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p style="text-align: justify; "><span>As illustrated by Table 2, the patentee’s working description (Text A) is identical in 2011 and 2014 for both patents, though in 2014 one patent is allegedly worked and the other is not. Likewise, in 2013, one patent is worked and the other is not, yet the textual description for both is identical (Text B). Putting aside, for a moment, the fact that neither Text A not Text B is particularly responsive to the information requirements of Form 27, it is puzzling why the patentee would use the same stock language to describe both working and non-working of its patents. The only consistency that emerges from this example is across filing years, suggesting, perhaps, that the textual descriptions used in these forms was more dependent on the person or firm making the filing in a particular year than the alleged working status of the patents in question.</span></p>
<h3><a name="IV"></a>IV. Discussion and Analysis</h3>
<p style="text-align: justify; ">Professor Basheer charges that significant numbers of Forms 27 are “grossly incomplete, incomprehensible or inaccurate,” and has sued the Indian Patent Office to compel it to improve its monitoring and enforcement of Form 27 filings.<a name="_ftnref178"></a> Our results confirm that there are overall weaknesses in the Indian Form 27 system, several of which reveal deeper problems with the implementation of India’s patent working requirement.</p>
<h4><a></a>A. Process Weaknesses</h4>
<p style="text-align: justify; ">Though filings in support of India’s patent working obligation have been required since 1972, and Form 27 has been on the books since 2003, meaningful filings of Form 27 did not begin until the Controller’s first public notice on this topic in 2009. In the following eight years, Form 27 filings have increased, but are still well below required levels (see Part III.A, above). Even at their peak in 2013, we located only 70.7% of required Forms 27 in the mobile device sector, a sector characterized by sophisticated firms that are advised by counsel. Filing ratios were significantly lower in every other year.</p>
<p style="text-align: justify; ">There are several possible reasons for these discrepancies. First are possible issues with the IPO’s electronic access to records. As noted in Part II, we experienced significant difficulties obtaining Forms 27 through the IPO’s web site. It was only after two RTI requests that significant numbers of Forms 27 were made accessible online. It is possible that the IPO has additional Forms 27 in its files that have not been made accessible electronically. For a system the purpose of which is to make information about non-worked patents available to the public, such lapses are inexcusable, particularly given that India’s current working requirement is nearing its 50th anniversary. Accordingly, we expect that improvements to the IPO’s electronic filing and access systems may improve the profile of Form 27 filing compliance.</p>
<h4><a name="IVB"></a>B. Non-Enforcement and Non-Compliance</h4>
<p style="text-align: justify; ">As noted above, we expect that some portion of the apparent non-compliance with India’s Form 27 requirement is attributable to the inaccessibility of properly filed Forms 27. However, it is also likely that some portion of the deficit in available Forms 27 is due to actual non-compliance by patentees. Though there are stiff penalties on the books for failing to comply with Form 27 filing requirements, including fines and imprisonment,<a name="_ftnref179"></a> we are unaware of any enforcement action by the IPO or any other Indian governmental authority regarding such non-compliance.<a name="_ftnref180"></a></p>
<p style="text-align: justify; ">Given that records of all issued Indian patents are available online, and that all filed Forms 27 should also be available online, it would not seem particularly difficult for the IPO to implement an automatic monitoring and alert system warning patentees that they have not filed required Forms 27. Such a system would likely increase compliance substantially. However, we find no evidence that the IPO monitors or otherwise keeps track of Form 27 filings or seeks to contact patentees who fail to meet their filing requirements. As a result, it is not surprising that non-compliance is widespread.</p>
<h4><a name="IVC"></a>C. Uncertainty Surrounding Working and Complex Products</h4>
<p style="text-align: justify; ">When Forms 27 are filed, many of them lack any meaningful detail regarding the manner in which patents are worked or the reasons that they are not worked. While the descriptive requirements of Form 27 are quite clear, even the largest and most sophisticated patentees seemingly struggle with determining whether or not a patent is actually worked in India and, if so, how to quantify its working in the manner required by the Form. There are several reasons that this degree of uncertainty exists. First, India has no clear statutory, regulatory or judicial guidelines for interpreting its working requirement. As the court noted in <i>Natco</i>, the working determination must be made on a case by case basis, with attention to the specific details of the patent in question.<a name="_ftnref181"></a> This open-ended standard offers little guidance to firms regarding the degree to which importation or licensing may qualify as working a patent, or even what degree of assembly, packaging or distribution within India will so qualify.</p>
<p style="text-align: justify; ">Additionally, some patentees have taken the position in their Forms 27 that merely licensing a patent to an Indian firm qualifies as working the patent in India.<a name="_ftnref182"></a> Some have even gone so far as to take the position that granting a <i>worldwide</i> patent license qualifies as working the licensed patent in India, given that India is part of the world.<a name="_ftnref183"></a> These conclusions seem stretched, but they have not, to our knowledge, ever been challenged by the IPO or any private party.</p>
<p style="text-align: justify; ">What’s more, several patentees take the position that it is impossible to determine the value attributable to a single patent that covers only one element of a complex standard or product (“too big to know”).<a name="_ftnref184"></a> While these patentees may disclose the size of their large patent portfolios or total Indian product revenues, these figures do not provide the information required by Form 27 relative to the individual patent that is claimed to be worked.</p>
<p style="text-align: justify; ">Given the degree of uncertainty surrounding the Indian working requirement and how it is satisfied, it is not surprising that the disclosures contained in most Forms 27 are meaningless boilerplate that convey little or no useful information about the relevant patents or products. Moreover, it is questionable whether it is even <i>possible</i> for a willing patentee to provide the product and revenue information currently required by Form 27 for complex, multi-patent products such a mobile devices.<a name="_ftnref185"></a> It may be time for the IPO to revisit the information requirements of Form 27, which were seemingly developed with products covered by one or a handful of patents in mind, to more suitable address complex electronic and communications products that may be covered by hundreds or thousands of patents each.</p>
<h4><a name="IVD"></a>D. Strategic Behavior</h4>
<p style="text-align: justify; ">In an environment of extreme uncertainty and low enforcement, it is not surprising that patentees have developed self-serving strategies to achieve their internal goals while arguably complying with the requirements of Form 27. Evidence of strategic behavior can be seen clearly in the divide between those patentees that claim that they are working most of their patents and those that claim that they are not.<a name="_ftnref186"></a> We can assume that there are not significant differences in the portfolio make-up among these different patentees, so the large difference between their ratios of worked and non-worked patents must be attributable primarily to decisions made to further corporate interests.</p>
<p style="text-align: justify; ">For example, it is possible that those patentees claiming significant working of their patents do so in order to avoid requests for compulsory licenses against their patents. Such patentees may wish to exploit the Indian market themselves, or license others to do so on terms of their choosing, so may seek to avoid compulsory licensing on terms dictated by the government. Those patentees claiming significant non-working, on the other hand, may actively be <i>seeking</i> applications for compulsory licensing. Why? Perhaps because these patentees do not plan to sell products in India and see little prospect of entering into commercial license agreements with Indian producers. Thus, their greatest prospect of any financial return on their patents may be a compulsory license. As unlikely as it sounds, they may be using Form 27 as a legally-sanctioned “To Let” sign for otherwise unprofitable patents.<a name="_ftnref187"></a></p>
<p style="text-align: justify; ">Whatever the underlying reasons are for patentee strategic decisions in the filing of Forms 27, IPO owes the public greater clarity regarding the formal requirements for working patents in India. It is only when disclosures are made in a consistent and understandable format that the public will acquire the knowledge about patent working that the Act intends for them to receive.</p>
<h4><a name="IVE"></a>E. Opportunities for Further Study</h4>
<p style="text-align: justify; ">This is the first comprehensive and systematic study of reporting compliance with India’s patent working requirements. It covers only one industry sector: mobile devices. Expanding this study to additional industry sectors, particularly pharmaceuticals and biomedical products, would likely yield additional insights.</p>
<p style="text-align: justify; ">It would also be informative to revisit the instant set of patents in a few years time to determine whether increased IPO access to electronic records may alter the somewhat poor compliance landscape revealed by this study. That is, if a significant number of Forms 27 that have been filed are simply unavailable through the IPO’s web site, then hopefully continued information technology improvements at the IPO will improve availability in years to come.</p>
<h3><a name="conclusion"></a>Conclusion</h3>
<p style="text-align: justify; ">India’s annual Form 27 filing requirement is intended to provide the public with information regarding the working of patents in India so as to enable informed requests to be made for compulsory licenses of non-worked patents. While such a goal is laudable, it is not clear that this system is currently achieving the desired results.</p>
<p style="text-align: justify; ">In the first systematic study of all Forms 27 filed with respect to a key industry sector ñ mobile devices ñ we found significant under-reporting of patent working, likely due to some combination of systemic deficiencies and non-compliance by patentees. Thus, from 2009 to 2016, we could identify and access only 20.1% of Forms 27 that should have been filed in this sector, corresponding to 72.5% of all mobile device patents for which Forms 27 should have been filed. Forms 27 were missing for almost all patentees, suggesting that defects in the Indian Patent Office’s online access system may play a role in the unavailability of some forms.</p>
<p style="text-align: justify; ">But even among Forms 27 that were accessible, almost none contained useful information regarding the working of the subject patents or fully complying with the informational requirements of the Form and the Indian Patent Rules. Patentees adopted drastically different positions regarding the definition of patent working, some arguing that importation of products into India or licensing of Indian suppliers constituted working, while others even went so far as to argue that the granting of a worldwide license to a non-Indian firm constituted working in India. Several significant patentees claimed that they or their patent portfolios were simply too large to enable the provision of information relating to individual patents, and instead provided gross revenue and product sale figures, together with historical anecdotes about their long histories in India. And many patentees simply omitted required descriptive information from their Forms without explanation.</p>
<p style="text-align: justify; ">The Indian government has made little or no effort to monitor or police compliance with Form 27 filings, likely encouraging non-compliance. Moreover, some of the complaints raised by patentees and industry observers regarding the structure of the Form 27 requirement itself have merit. Namely, patents covering complex, multi-component products that embody dozens of technical standards and thousands of patents are not necessarily amenable to the individual-level data requested by Form 27. We hope that this study will contribute to the ongoing conversation in India regarding the most appropriate means for collecting and disseminating information regarding the working of patents.</p>
<h3><a name="appendix"></a>APPENDIX</h3>
<p>TABLE A1</p>
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<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p><figure><img alt="X" height="700" src="http://jipel.law.nyu.edu/wp-content/uploads/2018/01/xNYU_JIPEL_Vol-7-No-1_1_Contreras_PatentWorkingRequirements_Table_Body_4.png.pagespeed.ic.Mcl57DRV78.webp" width="500" /></figure></p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<p> </p>
<hr align="left" size="1" width="33%" />
<div id="author">
<p style="text-align: justify; "><a name="_author"></a>Professor, University of Utah S.J. Quinney College of Law and Senior Fellow, Centre for International Governance Innovation. JD (Harvard Law School), BSEE, BA (Rice University). The authors are grateful for constructive discussion and feedback at the 2016 Works in Progress in Intellectual Property conference at University of Washington, the 2017 International Intellectual Property Roundtable at NYU Law School, the 2017 Intellectual Property Scholars Conference (IPSC) at Cardozo Law School, the Second International Conference on Standardization, Patents and Competition Issues at Jindal Global Law School, and a faculty workshop at the University of Utah S.J. Quinney College of Law. We also thank Anubha Sinha, Shamnad Basheer, Nehaa Chaudhari, Kirti Gupta, Kshitij Kumar Singh, Marketa Trimble and Sai Vinod for their helpful input regarding this article, and Anna Liz Thomas and Nayana Dasgupta for valuable research assistance. The research for this article was conducted as part of the Pervasive Technologies Project at the Centre for Internet and Society, India, and has been supported, in part, by the International Development Research Centre (Canada), the Albert and Elaine Borchard Fund for Faculty Excellence at the University of Utah and Google, Inc. The views expressed in this article are solely those of the authors.</p>
<p><a name="_author"></a>Program Officer, Centre for Internet and Society, India. Bachelor of Instrumentation Engineering (University of Mumbai).</p>
<p><a name="_author"></a>Law Clerk, Supreme Court of Utah. JD (University of Utah S.J. Quinney College of Law), BS, BA (Butler University).</p>
</div>
<div id="ftn1">
<p><a name="_ftn1"></a> Natco Pharma Ltd. v. Bayer Corp., (2011) I.P.O. Order No. 1, at 6 (India).</p>
</div>
<div id="ftn2">
<p><a name="_ftn2"></a> <i>See id.</i></p>
</div>
<div id="ftn3">
<p style="text-align: justify; "><a name="_ftn3"></a> The Natco case is one in a long line of cases in the ongoing “access to medicines” dispute, in which developing countries seek compulsory licenses for local use of lifesaving drugs that are patented by western pharmaceutical firms. <i>See, e.g.</i>, <span>Srividhya Ragavan, Patent and Trade Disparities in Developing Countries (2012)</span>; Charles R. McManis and Jorge L. Contreras, <i>Compulsory Licensing of Intellectual Property: A Viable Policy Lever for Promoting Access to Critical Technologies?</i>,<i> in</i> TRIPS and Developing Countries ñ Towards a New IP World Order? (Gustavo Ghidini, Rudolph J.R. Peritz & Marco Ricolfi, eds. 2014); Jerome H. Reichman, Comment<i>: Compulsory Licensing of Patented Pharmaceutical Inventions: Evaluating the Options, </i>37 <span>J. L. Med. & Ethics </span>247, 250 (2009).</p>
</div>
<div id="ftn4">
<p><a name="_ftn4"></a> Natco Pharma Ltd. v. Bayer Corp., <i>supra </i>note <a name="_ftnref"></a> at 6.</p>
</div>
<div id="ftn5">
<p><a name="_ftn5"></a> <i>See</i> Patents Act, No. 39 of 1970, <span>India Code</span> (1970), ch. XVI, ß 84(1).</p>
</div>
<div id="ftn6">
<p style="text-align: justify; "><a name="_ftn6"></a> <i>See </i>Rochelle Dreyfuss & Susy Frankel, <i>From Incentive to Commodity to Asset: How International Law Is Reconceptualizing Intellectual Property</i>, 36 <span>Mich. J. Int’l L.</span> 557, 576 (2015); <i>See also</i> Feroz Ali, <i>Picket Patents: Non-Working as an IP Abuse</i>, at *5, <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2732521">https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2732521</a> (last visited Feb. 6, 2017); <i>see also</i> Bryan Mercurio & Mitali Tyagi, <i>Treaty Interpretation in WTO Dispute Settlement: The Outstanding Question of the Legality of Local Working Requirements</i>, 19 M<span>inn. J. Int’l L. </span>275, 281 (2010).</p>
</div>
<div id="ftn7">
<p><a name="_ftn7"></a> Marketa Trimble, <i>Patent Working Requirements: Historical and Comparative Perspectives</i>, 6 U.C. Iʀᴠɪɴᴇ L. Rᴇᴠ. 483, 500-501 (2016).</p>
</div>
<div id="ftn8">
<p><a name="_ftn8"></a> <i>Id</i>. at 495.</p>
</div>
<div id="ftn9">
<p><a name="_ftn9"></a> Jorge L. Contreras & Rohini LakshanÈ, <i>Patents and Mobile Devices in India: An Empirical Survey</i>, 50 <span>Vand. Transnat’l</span> L.J. 1 (2017). The data set used in the foregoing study can be found at <a href="https://cis-india.org/a2k/blogs/dataset-patent-landscape-of-mobile-device-technologies-in-india">https://cis-india.org/a2k/blogs/dataset-patent-landscape-of-mobile-device-technologies-in-india</a>.</p>
</div>
<div id="ftn10">
<p><a name="_ftn10"></a> Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 488. In England, royal patents were granted to foreigners who would teach their art to the local population<i>.</i> <i>Id.</i> at 488, 497. Venice provided monopoly rights and tax holidays for foreign inventors to immigrate and improve local industrialization. Ragavan, <i>supra</i> note <a name="_ftnref"></a>, at 3.</p>
</div>
<div id="ftn11">
<p><a name="_ftn11"></a> <i>See </i>Ragavan, <i>supra</i> note <a name="_ftnref"></a>, at 3; <i>see also</i> G.B. Reddy & Harunrashid A. Kadri, <i>Local Working of Patents ñ Law and Implementation in India</i>, 18 J. Intell. Prop. Rights 15, 15 (2013).</p>
</div>
<div id="ftn12">
<p><a name="_ftn12"></a> <i>See </i>Ragavan, <i>supra</i> note <a name="_ftnref"></a>, at 3; <i>see also </i>Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 488.</p>
</div>
<div id="ftn13">
<p><a name="_ftn13"></a> <i>See </i>Ragavan, <i>supra</i> note <a name="_ftnref"></a>, at 3; <i>see also </i>Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 16.</p>
</div>
<div id="ftn14">
<p><a name="_ftn14"></a> <i>See </i>Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 17; <i>see also</i> Ali, <i>supra</i> note <a name="_ftnref"></a>, at *9.</p>
</div>
<div id="ftn15">
<p><a name="_ftn15"></a> <i>See generally </i>Paul Champ & Amir Attaran, <i>Patent Rights and Local Working Under the WTO TRIPS Agreement: An Analysis of the U.S.-Brazil Patent Dispute</i>, <span>27 Yale J. Int’l L.</span> 365, 371 (2002).</p>
</div>
<div id="ftn16">
<p><a name="_ftn16"></a> Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 498 (“In the United Kingdom in the 18th century ‘the requirement of compulsory working dropped into desuetude and its place was taken for all practical purposes, in particular in the practice of the law courts, by [the full disclosure] requirement’”) (alterations in original) (internal citations omitted).</p>
</div>
<div id="ftn17">
<p><a name="_ftn17"></a> Paris Convention for the Protection of Industrial Property, World Intellectual Property Organization, art. 5(A)(1), March 20, 1883.</p>
</div>
<div id="ftn18">
<p><a name="_ftn18"></a> <i>See </i>Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 17; <i>see also </i>Champ & Attaran, <i>supra</i> note <a name="_ftnref"></a>, at 371; Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 493ñ94.</p>
</div>
<div id="ftn19">
<p><a name="_ftn19"></a> Hague Revision to Paris Convention for the Protection of Industrial Property, World Intellectual Property Organization, art. (5)(A)(2), November 6, 1925.</p>
</div>
<div id="ftn20">
<p><a name="_ftn20"></a> <i>See </i>Champ & Attaran, <i>supra</i> note <a name="_ftnref"></a>, at 372; <i>see also</i> Trimble, <i>supra</i>note <a name="_ftnref"></a>, at *490-94 (tracing history of remedies for failure to meet working requirements, including forfeiture).</p>
</div>
<div id="ftn21">
<p><a name="_ftn21"></a> London Revision to Paris Convention for the Protection of Industrial Property, World Intellectual Property Organization, art. 5(A)(4), June 2, 1934; <i>See</i> Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 494.</p>
</div>
<div id="ftn22">
<p><a name="_ftn22"></a> Stockholm Revision to Paris Convention for the Protection of Industrial Property, World Intellectual Property Organization, art. 5(A)(2), July 14, 1967.</p>
</div>
<div id="ftn23">
<p><a name="_ftn23"></a> <i>See </i>Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 494-95;<i> see also</i> Janice M. Mueller, <i>The Tiger Awakens: The Tumultuous Transformation of India’s Patent System and the Rise of Indian Pharmaceutical Innovation</i>, 68 U. Pitt. L. Rev. 491, 517-18 (2007)..</p>
</div>
<div id="ftn24">
<p><a name="_ftn24"></a> <i>See </i>Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 494.</p>
</div>
<div id="ftn25">
<p><a name="_ftn25"></a> <i>See </i>Ragavan, <i>supra</i> note <a name="_ftnref"></a>, at 65-66. <i>See generally</i> TRIPS: Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1c, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994), <i>reprinted in </i>World Trade Organization, The Results of the Uruguay Round of Multilateral Trade Negotiations 365 (1995) [hereinafter “TRIPS Agreement”].</p>
</div>
<div id="ftn26">
<p><a name="_ftn26"></a> Additionally, those countries that were not members of the Paris Union but are members of the WTO are therefore obligated to comply with the Paris Convention and its revisions under Article 2.2 of the TRIPS Agreement.</p>
</div>
<div id="ftn27">
<p><a name="_ftn27"></a> TRIPS Agreement, <i>supra</i> note <a name="_ftnref"></a>, art. 27.1.</p>
</div>
<div id="ftn28">
<p><a name="_ftn28"></a> TRIPS Agreement, <i>supra</i> note <a name="_ftnref"></a>, art. 30-31; <i>see also</i> <span>Ragavan, </span><i>supra</i>note <a name="_ftnref"></a>; McManis and Contreras, <i>supra</i> note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn29">
<p><a name="_ftn29"></a> <i>See generally </i>Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 496; Shamnad Basheer, <i>Making Patents Work: Of IP Duties and Deficient Disclosures</i>, 7 <span>Queen Mary J. Intell. Prop</span>. 3, 16-17 (2017).</p>
</div>
<div id="ftn30">
<p><a name="_ftn30"></a> Request for Consultations by the United States, <i>Brazil ñ Measures Affecting Patent Protection</i>, WTO Doc. WT/DS199/1 (June 8, 2000);<i> see also </i>Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 17; Trimble, <i>supra</i> note <a name="_ftnref"></a>, at 496-497.</p>
</div>
<div id="ftn31">
<p><a name="_ftn31"></a> Champ & Attaran, <i>supra</i> note <a name="_ftnref"></a>, at 380.</p>
</div>
<div id="ftn32">
<p><a name="_ftn32"></a> Article 28(1) of the TRIPS Agreement defines the rights that may be conferred on patent owners.</p>
</div>
<div id="ftn33">
<p><a name="_ftn33"></a> Champ & Attaran, <i>supra</i> note <a name="_ftnref"></a>, at 381-82.</p>
</div>
<div id="ftn34">
<p style="text-align: justify; "><a name="_ftn34"></a> <i>Id. </i>at 381. The two patented drugs that the Brazilian Ministry of Health threatened to grant compulsory licenses on were efavirenz and nelfinavir. These drugs are antiretroviral drugs used to treat AIDS. Geoff Dyer, <i>Brazil Defiant Over Cheap AIDS Drugs</i>, <span>Fin. Times</span>, Feb. 9, 2001, at 10.</p>
</div>
<div id="ftn35">
<p><a name="_ftn35"></a> Barbara Crossette, <i>U.S. Drops Case Over AIDS Drugs in Brazil</i>, N.Y. Times (June 26, 2001), <a href="http://www.nytimes.com/2001/06/26/world/us-drops-case-over-aids-drugs-in-brazil.html">http://www.nytimes.com/2001/06/26/world/us-drops-case-over-aids-drugs-in-brazil.html</a>.</p>
</div>
<div id="ftn36">
<p><a name="_ftn36"></a> <span>Kalyan C. Kankanala, Arun K. Narasani & Vinita Radhakrishnan, Indian Patent Law & Practice</span> 1 (2010).</p>
</div>
<div id="ftn37">
<p><a name="_ftn37"></a> <i>See</i> Mueller, <i>supra</i> note <a name="_ftnref"></a>, at 509-511; <i>see also</i> <span>Ragavan</span>, <i>supra</i> note <a name="_ftnref"></a>, at 31.</p>
</div>
<div id="ftn38">
<p><a name="_ftn38"></a> Shri Justice N. Rajagopala Ayyangar, Report on the Revision of the Patents Law (September 1959) [hereinafter “Ayyangar Report”]; Ragavan,<i>supra</i> note <a name="_ftnref"></a>, at 31-33.</p>
</div>
<div id="ftn39">
<p><a name="_ftn39"></a> <span>P. Narayanan, Patent Law</span> 5 (4th ed. 2006).</p>
</div>
<div id="ftn40">
<p><a name="_ftn40"></a> Ayyangar Report, <i>supra</i> note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn41">
<p><a name="_ftn41"></a> <span>Ragavan</span>, <i>supra</i> note <a name="_ftnref"></a>, at 35.</p>
</div>
<div id="ftn42">
<p><a name="_ftn42"></a> <i>Id</i>. at 39-40.</p>
</div>
<div id="ftn43">
<p><a name="_ftn43"></a> <i>See generally </i>The Patents Act, No. 39 of 1970,<span> India Code</span> (1970).</p>
</div>
<div id="ftn44">
<p><a name="_ftn44"></a> <i>See</i> <span>Ragavan, </span><i>supra</i> note <a name="_ftnref"></a>, at 42-45 (summarizing changes effected by the 1970 law).</p>
</div>
<div id="ftn45">
<p><a name="_ftn45"></a> The Patents Act, 1970 ß 83 (emphasis added).</p>
</div>
<div id="ftn46">
<p><a name="_ftn46"></a> The Indian Controller General of Patents, Designs & Trade Marks, who will be referred to herein as the Controller for simplicity.</p>
</div>
<div id="ftn47">
<p><a name="_ftn47"></a> The Patents Act, 1970, ß 84(1) (emphasis added). The three-year time period reflected in the Act is derived from Section 5(A)(4) of the Paris Convention (current numbering). <i>See</i> <i>supra </i>note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn48">
<p><a name="_ftn48"></a> The Patents Act, 1970 ß 84(1).</p>
</div>
<div id="ftn49">
<p><a name="_ftn49"></a> <i>Id.</i> ß 90(c).</p>
</div>
<div id="ftn50">
<p><a name="_ftn50"></a> <i>Id.</i></p>
</div>
<div id="ftn51">
<p style="text-align: justify; "><a name="_ftn51"></a> <i>Id</i>. ß 89(3). While the language of Section 89 is couched in terms of the “reasonable requirements of the public,” it is interesting to note that the caption of the section reads “Revocation of patents by the Controller for non-working,” thus focusing more explicitly on the working requirement.</p>
</div>
<div id="ftn52">
<p><a name="_ftn52"></a> The Patents Act, 1970 ß 89(1). The two-year time period reflected in the Act is derived from Section 5(A)(3) of the Paris Convention (current numbering). <i>See supra</i> note <a name="_ftnref"></a> and accompanying text.</p>
</div>
<div id="ftn53">
<p><a name="_ftn53"></a> <i>See</i> India and the WTO, Wᴏʀʟᴅ Tʀᴀᴅᴇ Oʀɢ.,<a href="http://www.wto.org/english/thewto_e/countries_e/india_e.htm">http://www.wto.org/english/thewto_e/countries_e/india_e.htm</a>.<i> See generally </i>TRIPS Agreement.</p>
</div>
<div id="ftn54">
<p style="text-align: justify; "><a name="_ftn54"></a> India amended its 1970 Act in three amendments, corresponding to the transition periods permitted by the TRIPS Agreement. India played a significant role in establishing the TRIPS multi-year transition periods. <i>See </i>Mueller, <i>supra</i> note <a name="_ftnref"></a>, at 518. For a discussion of India’s political and economic considerations underlying its support of compulsory licensing under TRIPS, <i>see</i> Omar Serrano & Mira Burri, <i>Making Use of TRIPS Flexibilities: Implementation and Diffusion of Compulsory Licensing Regimes in Brazil and India</i> (World Trade Inst. Working Paper No. 1 2016).</p>
</div>
<div id="ftn55">
<p><a name="_ftn55"></a> The Patents (Amendment) Act, No. 38 of 2002, <span>India Code</span> (2002).</p>
</div>
<div id="ftn56">
<p><a name="_ftn56"></a> <i>Id</i>. ß 85.</p>
</div>
<div id="ftn57">
<p><a name="_ftn57"></a> <i>Id.</i> ß 83(c).</p>
</div>
<div id="ftn58">
<p><a name="_ftn58"></a> <i>Id</i>. ß 83(d)-(f).</p>
</div>
<div id="ftn59">
<p><a name="_ftn59"></a> <i>Id</i>. ß 89.</p>
</div>
<div id="ftn60">
<p><a name="_ftn60"></a> <i>Id</i>. ß 84(1) (emphasis added).</p>
</div>
<div id="ftn61">
<p><a name="_ftn61"></a> <i>Id.</i></p>
</div>
<div id="ftn62">
<p><a name="_ftn62"></a> <i>Id.</i> ß 84(6).</p>
</div>
<div id="ftn63">
<p style="text-align: justify; "><a name="_ftn63"></a> <i>See </i>Thomas Cottier, Shaheeza Lalani & Michelangelo Temmerman, <i>Use It or Lose It: Assessing the Compatibility of the Paris Convention and TRIPS Agreement with Respect to Local Working Requirements</i>, 17 J. Int’l Econ. L. 437, 441 (2014).</p>
</div>
<div id="ftn64">
<p style="text-align: justify; "><a name="_ftn64"></a> <i>See </i>The Patents Act, No. 39 of 1970, <span>India Code</span> (1970), ß 90(2) (“No license granted by the Controller shall authorise the licensee to import the patented article or an article or substance made by a patented process from abroad where such importation would, but for such authorisation, constitute an infringement of the rights of the patentee.”).</p>
</div>
<div id="ftn65">
<p><a name="_ftn65"></a> <i>See</i> Basheer, <i>supra</i> note <a name="_ftnref"></a>, at 9.</p>
</div>
<div id="ftn66">
<p><a name="_ftn66"></a> Natco Pharma Ltd. v. Bayer Corp., (2011) I.P.O. Order No. 1, 5 (India).</p>
</div>
<div id="ftn67">
<p><a name="_ftn67"></a> <i>Id.</i> at 22.</p>
</div>
<div id="ftn68">
<p><a name="_ftn68"></a> <i>Id</i>. at 25 (noting that an average Indian government employee would have to work for 3.5 years to afford a single month’s dosage).</p>
</div>
<div id="ftn69">
<p><a name="_ftn69"></a> <i>Id</i>. at 6.</p>
</div>
<div id="ftn70">
<p><a name="_ftn70"></a> <i>Id</i>. at 5.</p>
</div>
<div id="ftn71">
<p><a name="_ftn71"></a> <i>Id</i>.</p>
</div>
<div id="ftn72">
<p><a name="_ftn72"></a> <i>Id</i>. at 6.</p>
</div>
<div id="ftn73">
<p><a name="_ftn73"></a> <i>Id.</i></p>
</div>
<div id="ftn74">
<p><a name="_ftn74"></a> Id. at 37.</p>
</div>
<div id="ftn75">
<p><a name="_ftn75"></a> <i>Id.</i></p>
</div>
<div id="ftn76">
<p><a name="_ftn76"></a> <i>Id.</i> at 38.</p>
</div>
<div id="ftn77">
<p><a name="_ftn77"></a> <i>Id.</i> at 40-41.</p>
</div>
<div id="ftn78">
<p><a name="_ftn78"></a> <i>Id.</i> at 43.</p>
</div>
<div id="ftn79">
<p><a name="_ftn79"></a> <i>Id.</i> at 45 (“I am therefore convinced that ‘worked in the territory of India’ means ‘manufactured to a reasonable extent in India.’”).</p>
</div>
<div id="ftn80">
<p><a name="_ftn80"></a> <i>Id. </i>at 60.</p>
</div>
<div id="ftn81">
<p><a name="_ftn81"></a> Natco Pharma Ltd. v. Bayer Corp., (2013) I.P.A.B. Order No. 45 (India).</p>
</div>
<div id="ftn82">
<p><a name="_ftn82"></a> <i>Id</i>.</p>
</div>
<div id="ftn83">
<p><a name="_ftn83"></a> <i>Id</i>.</p>
</div>
<div id="ftn84">
<p><a name="_ftn84"></a> <i>Id</i>. at 43.</p>
</div>
<div id="ftn85">
<p><a name="_ftn85"></a> Bayer Corp. v. Union of India, Bombay High Ct. at 29 (Jul. 15, 2014).</p>
</div>
<div id="ftn86">
<p><a name="_ftn86"></a> <i>Id</i>.</p>
</div>
<div id="ftn87">
<p><a name="_ftn87"></a> <i>Id</i>.</p>
</div>
<div id="ftn88">
<p><a name="_ftn88"></a> <i>Id.</i> at 24.</p>
</div>
<div id="ftn89">
<p style="text-align: justify; "><a name="_ftn89"></a> <i>Id</i>. Bayer subsequently appealed to the Indian Supreme Court, which declined to hear the case. <i>See</i> Samanwaya Rautray, <i>Nexavar License Case: SC Dismisses Bayer’s Appeal Against HC Decision</i>, <span>Economic Times</span>, Dec. 13, 2014, <a href="http://economictimes.indiatimes.com/industry/healthcare/biotech/pharmaceuticals/nexavar-licence-case-sc-dismisses-bayers-appeal-against-hc-decision/articleshow/45500051.cms">http://economictimes.indiatimes.com/industry/healthcare/biotech/pharmaceuticals/nexavar-licence-case-sc-dismisses-bayers-appeal-against-hc-decision/articleshow/45500051.cms</a></p>
</div>
<div id="ftn90">
<p><a name="_ftn90"></a> Harsha Rohatgi, <i>Indian Patent Office Rejects Compulsory Licensing Application: BDR Pharmaceuticals Pvt. Ltd. vs. Bristol Myers Squibb</i>, Khurana & Khurana (last visited Oct. 20, 2017), <a href="http://www.khuranaandkhurana.com/2013/11/13/indian-patent-office-rejects-compulsory-licensing-application-bdr-pharmaceuticals-pvt-ltd-vs-bristol-myers-squibb/">http://www.khuranaandkhurana.com/2013/11/13/indian-patent-office-rejects-compulsory-licensing-application-bdr-pharmaceuticals-pvt-ltd-vs-bristol-myers-squibb/</a>.</p>
</div>
<div id="ftn91">
<p><a name="_ftn91"></a> Patralekha Chatterjee, <i>2013: India Battles for Right to Use Compulsory Licenses to Make Medicines Affordable</i>, <span>Intellectual Property Watch</span>(last visited Oct. 20, 2017), <a href="https://www.ip-watch.org/2013/01/22/2013-india-battles-for-right-to-use-compulsory-licences-to-make-medicines-affordable/">https://www.ip-watch.org/2013/01/22/2013-india-battles-for-right-to-use-compulsory-licences-to-make-medicines-affordable/</a>.</p>
</div>
<div id="ftn92">
<p style="text-align: justify; "><a name="_ftn92"></a> <i>See</i> Pankhuri Agarwal, <i>DIPP Drags the Dasatinib Compulsory License Drama: A Situation of ‘Extreme Urgency’?</i>, SpicyIP blog (Sep. 24, 2016), <a href="https://spicyip.com/2016/09/dipp-drags-the-dasatinib-compulsory-license-drama-a-situation-of-extreme-urgency.html">https://spicyip.com/2016/09/dipp-drags-the-dasatinib-compulsory-license-drama-a-situation-of-extreme-urgency.html</a>. <i>See, e.g.</i>, IPO Order No. C.L.A. No.1 of 2015, In the matter of Lee Pharma Ltd v. AstraZeneca AB, dated January 19, 2016 (rejecting application due to lack of evidence presented under all three prongs of Section 84 analysis).</p>
</div>
<div id="ftn93">
<p style="text-align: justify; "><a name="_ftn93"></a> For example, Article 68 of Brazil’s 1996 Industrial Property Law subjects a patentee to compulsory licensing if the patentee does not exploit “the object of the patent within the Brazilian territory for failure to manufacture the product or failure to use a patented process.” 68 C.P.I., Law No. 9,279 (Brazil, May 14, 1996). For additional examples, <i>See </i>Cottier et al., <i>supra</i> note <a name="_ftnref"></a>, at 461-71.</p>
</div>
<div id="ftn94">
<p style="text-align: justify; "><a name="_ftn94"></a> While form submissions to show the working of a patent are unique to India’s patent law, a submission requirement to maintain intellectual property rights is similarly used in the United States for trademarks. In the United States, registered trademark owners must submit a declaration of use to avoid cancellation of the registration. <i>See </i>15 U.S.C. ß 1058.</p>
</div>
<div id="ftn95">
<p><a name="_ftn95"></a> The Patents Act, No. 39 of 1970, India Code (1970), ß 146(2).</p>
</div>
<div id="ftn96">
<p><a name="_ftn96"></a> <i>Id.</i></p>
</div>
<div id="ftn97">
<p><a name="_ftn97"></a> The Patent Rules, Rule 131, India (2003).</p>
</div>
<div id="ftn98">
<p style="text-align: justify; "><a name="_ftn98"></a> The Patent Rules, Rule 131, India (2003). There is an apparent discrepancy between section 146(2) of the India Patents Act, 1970 and Rule 131 of the Patent Rules, 2003. While section 146 suggests that patentees should file Forms 27 every six months, Rule 131 of the Patent Rules, 2003 requires the statements to be furnished in respect of every calendar year.</p>
</div>
<div id="ftn99">
<p><a name="_ftn99"></a> The Patents Act, No. 39 of 1970, India Code (1970), ß 146(2).</p>
</div>
<div id="ftn100">
<p style="text-align: justify; "><a name="_ftn100"></a> The public requirement refers to “the reasonable requirements of the public with respect to the patented invention.” The Patents (Amendment) Act, No. 38 of 2002, <span>India Code</span> (2002), ß 84(1)(a). In other words, if the patentee must explain how he has or has not met his duties under section 83 and 84 of the Patents Amendment Act of 2002.</p>
</div>
<div id="ftn101">
<p><a name="_ftn101"></a> Patents Rules, Form 27, 2003.</p>
</div>
<div id="ftn102">
<p><a name="_ftn102"></a> The Patents (Amendment) Act, No. 38 of 2002, <span>India Code</span> (2002), ß 122 provides:</p>
<p>“1) If any person refuses or fails to furnish-Ö b) to the controller any information or statement which he is required to furnish by or under section 146,</p>
<p>he shall be punishable with [a] fine which may extend to twenty thousand rupees.</p>
<p style="text-align: justify; ">2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.”</p>
</div>
<div id="ftn103">
<p><a name="_ftn103"></a> Annual Report 2007-08, Office of the Controller General of Patents, Designs, and Trade Marks including GIR and PIS/NIIPM (IPTI), at 12; <i>see also</i> Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 21.</p>
</div>
<div id="ftn104">
<p style="text-align: justify; "><a name="_ftn104"></a> Annual Report 2008-09, Office of the Controller General of Patents, Designs, Trade Marks and Geographical Indications, at 21; Annual Report 2007-08, Office of the Controller General of Patents, Designs, and TradeMarks including GIR and PIS/NIIPM (IPTI), at 12; <i>see also</i> Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 21-22.</p>
</div>
<div id="ftn105">
<p style="text-align: justify; "><a name="_ftn105"></a> Controller Gen. of Patents, Designs and Trade Marks, Public Notice No. CG/PG/2009/179, Dec. 24, 2009; Controller Gen. of Patents, Designs and Trade Marks, Public Notice No. CG/Public Notice/2013/77, Feb. 12, 2013; Controller Gen. of Patents, Designs and Trade Marks, Public Notice No. CG/Public Notice/2015/95, 2015.</p>
</div>
<div id="ftn106">
<p><a name="_ftn106"></a> The Patents Act, No. 39 of 1970, India Code (1970), ß 122. (A patentee may be imprisoned for submitting false information).</p>
</div>
<div id="ftn107">
<p style="text-align: justify; "><a name="_ftn107"></a> Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 22; <i>see also </i>Shamnad Basheer v. Union of India, Writ Petition, at F (Del. 2015) [hereinafter Basheer Writ Petition (2015)] (“[T]he Respondents authorities have never initiated action against any of the errant patentees.”).</p>
</div>
<div id="ftn108">
<p><a name="_ftn108"></a> Prashant Reddy, <i>Patent Office Publishes All ‘Statements of Working’ ñ Finally</i>!, Spicy IP, (June 25, 2013) <a href="https://spicyip.com/2013/06/patent-office-publishes-all-statements.html">https://spicyip.com/2013/06/patent-office-publishes-all-statements.html</a>.</p>
</div>
<div id="ftn109">
<p style="text-align: justify; "><a name="_ftn109"></a> <i>See, e.g.</i>, Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a> (raising numerous deficiencies with Form 27); Shamnad Basheer & N. Sai Vinod <i>RTI Applications and ‘Working’ of Foreign Drugs in India</i>, Spicy IP, at 5 (Apr., 2011) (“However, Form 27 in its present format leaves much to be desired and we will be drafting a more optimal Form 27 and forwarding this to the government for consideration, so that the form can be a lot more clearer and can call for a greater range of information.”).</p>
</div>
<div id="ftn110">
<p><a name="_ftn110"></a> Letter from Philip S. Johnson, President, Intellectual Prop. Owners Assn., to Hon. Michael Froman, U.S. Trade Representative (Feb. 7, 2014).</p>
</div>
<div id="ftn111">
<p><a name="_ftn111"></a> <i>Id</i>.</p>
</div>
<div id="ftn112">
<p><a name="_ftn112"></a> <i>Id</i>.</p>
</div>
<div id="ftn113">
<p><a name="_ftn113"></a> Prathiba Singh & Ashutosh Kumar, <i>When in Rome, do as the Romans do</i>, IP Pro Life Sciences at 16, (Mar. 10, 2013)<a href="http://ipprolifesciences.com/ipprolifesciences/IPPro%20Life%20Sciences_issue_04.pdf">http://ipprolifesciences.com/ipprolifesciences/IPPro%20Life%20Sciences_issue_04.pdf</a>.</p>
</div>
<div id="ftn114">
<p><a name="_ftn114"></a> Among other things, Prof. Basheer is the founder of the SpicyIP blog, a leading source of intellectual property news and commentary in India. <i>See</i>Part III.A, <i>infra</i>, for a discussion of the results of his studies of Form 27 compliance.</p>
</div>
<div id="ftn115">
<p><a name="_ftn115"></a> Basheer & Vinod, <i>supra</i> note <a name="_ftnref"></a>, at 6-8.</p>
</div>
<div id="ftn116">
<p><a name="_ftn116"></a> Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn117">
<p><a name="_ftn117"></a> <i>Id.</i> at 1, 8.</p>
</div>
<div id="ftn118">
<p><a name="_ftn118"></a> Shamnad Basheer v. Union of India, Writ Petition No. 5590 (Del. 2015), Application Seeking Permission to Intervene in the Above Public Interest Litigation (2016). Some of the issues raised by Mr. Thappeta are discussed in Part IV below.</p>
</div>
<div id="ftn119">
<p><a name="_ftn119"></a> Bayer Corp. v. Union of India, Writ Petition No. 1323 of 2013, Judgment at 8ñ10 (Jul. 15, 2014).</p>
</div>
<div id="ftn120">
<p><a name="_ftn120"></a> Basheer, <i>supra</i> note <a name="_ftnref"></a>, at 17.</p>
</div>
<div id="ftn121">
<p><a name="_ftn121"></a> Indian Patent Office reporting year (Apr. 1 – Mar. 31).</p>
</div>
<div id="ftn122">
<p><a name="_ftn122"></a> <i>See supra</i> note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn123">
<p><a name="_ftn123"></a> Basheer & Vinod, <i>supra</i> note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn124">
<p><a name="_ftn124"></a> This study pre-dates the electronic availability of Forms 27.</p>
</div>
<div id="ftn125">
<p><a name="_ftn125"></a> Basheer & Vinod, <i>supra</i> note <a name="_ftnref"></a>, at 7-8.</p>
</div>
<div id="ftn126">
<p style="text-align: justify; "><a name="_ftn126"></a> Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>, at Annexure P-11, tbl. I. It is not clear how the studied patents were selected. They do not represent the totality of patents in the designated industry sectors. Likewise, it is not clear how “publicly-funded research” is defined nor the amount of such funding behind the selected patents.</p>
</div>
<div id="ftn127">
<p><a name="_ftn127"></a> It appears that this study covered three “reporting years” at the IPO: 2009-10, 2010-11 and 2011-12. Reporting years run from April 1 to March 31.</p>
</div>
<div id="ftn128">
<p><a name="_ftn128"></a> This figure is calculated as 1 – 263/421. Prof. Basheer has reported this ratio as approximately 35%. Basheer, <i>supra</i> note <a name="_ftnref"></a>, at 18.</p>
</div>
<div id="ftn129">
<p><a name="_ftn129"></a> Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>, at Annexure P-11, tbl. I.</p>
</div>
<div id="ftn130">
<p><a name="_ftn130"></a> <i>Id</i>. at 10.</p>
</div>
<div id="ftn131">
<p><a name="_ftn131"></a><i> Id</i>. at 10-16; Basheer, <i>supra</i> note <a name="_ftnref"></a>, at 19.</p>
</div>
<div id="ftn132">
<p><a name="_ftn132"></a> Basheer, <i>supra</i> note <a name="_ftnref"></a>, at 12-13.</p>
</div>
<div id="ftn133">
<p><a name="_ftn133"></a> <i>See</i> Contreras & LakshanÈ, <i>supra</i> note <a name="_ftnref"></a>, at 27-28 (describing electronic search and case harvesting methodology).</p>
</div>
<div id="ftn134">
<p><a name="_ftn134"></a> Searches were conducted and results were compiled by a contracted Indian service provider selected through a competitive bid process.</p>
</div>
<div id="ftn135">
<p style="text-align: justify; "><a name="_ftn135"></a> While InPASS and IPAIRS retrieve Form 27 submissions from the same URL, we observed that sometimes a submission that was displayed on data base was not displayed on the other. Thus, IPAIRS was used when Form 27 was not found for a queried patent on InPASS. InPASS has two features: Application Status and E-Register. At times, some forms were not available at E-Register that could be found through the Application Status table, and vice versa. Thus, both features were used. A detailed, step-by-step description of the search methodology used can be found at <a href="http://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents">http://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents</a>.</p>
</div>
<div id="ftn136">
<p><a name="_ftn136"></a> Ajoy Kumar, “Request for Information under Section 6 of the Right to Information Act, 2005; regarding Form 27 Submissions for Patents,” The Centre for Internet and Society, (June 10, 2015), <a href="https://cis-india.org/a2k/blogs/rti-app-2015.pdf/at_download/file">https://cis-india.org/a2k/blogs/rti-app-2015.pdf/at_download/file</a>.</p>
</div>
<div id="ftn137">
<p><a name="_ftn137"></a> Boudhik Bhawan, “Supply of information sought under RTI ñ reg,” The Centre for Internet and Society, (June 17, 2015), <a href="https://cis-india.org/a2k/blogs/rti-reply-2015.pdf/at_download/file">https://cis-india.org/a2k/blogs/rti-reply-2015.pdf/at_download/file</a>.</p>
</div>
<div id="ftn138">
<p><a name="_ftn138"></a> Ajoy Kumar, “Request for Information under Section 6 of the Right to Information Act, 2005; regarding Form 27 Submissions for Patents,” The Centre for Internet and Society, (Mar. 11, 2016), <a href="https://cis-india.org/a2k/blogs/rti-app-2016.pdf/at_download/file">https://cis-india.org/a2k/blogs/rti-app-2016.pdf/at_download/file</a>.</p>
</div>
<div id="ftn139">
<p><a name="_ftn139"></a> <i>Id.</i></p>
</div>
<div id="ftn140">
<p><a name="_ftn140"></a> Ujjwala Haldankar, “Supply of information sought under RTI, 2005 ñ reg,” The Centre for Internet and Society, (Apr. 4, 2016), <a href="https://cis-india.org/a2k/blogs/rti-reply-2016.pdf/at_download/file">https://cis-india.org/a2k/blogs/rti-reply-2016.pdf/at_download/file</a>.</p>
</div>
<div id="ftn141">
<p><a name="_ftn141"></a> Rohini LakshanÈ, Dataset for “Patent Working Requirements and Complex Products: An Empirical Assessment of India’s Form 27 Practice and Compliance,” The Centre for Internet and Society (Aug. 17, 2017), <a href="https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance">https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance</a>.</p>
</div>
<div id="ftn142">
<p><a name="_ftn142"></a> Similar deficiencies with the IPO’s online filing facility have been noted by Basheer. <i>See</i> Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>, at 17.</p>
</div>
<div id="ftn143">
<p style="text-align: justify; "><a name="_ftn143"></a> Prior to the 2002 Amendments to the Patents Act, 1970 (effective May 20, 2003), the term of product patents in India was 14 years from the date of issuance. Patents Act (2002 Amendments), Sec. 53. Accordingly, any patent issued in 1995 or earlier would be expired by 2009. Based on the data provided by the Controller and Basheer, it appears that few, if any, Forms 27 were filed prior to 2009. Thus, it is unlikely that any patent that expired prior to 2009 would have a corresponding Form 27. As a result, for purposes of counting Forms 27 that were, and should have been filed, we disregarded 107 patents in our dataset that were issued in 1995 or earlier (the vast majority of which were owned by Siemens).</p>
</div>
<div id="ftn144">
<p style="text-align: justify; "><a name="_ftn144"></a> A total of 4,935 Forms 27 were identified by our search. In 2013, Motorola filed 19 Forms 27 that were backdated to 2004 and 2005. These Forms corresponded to patents issued between 2008 and 2010, and apparently reflected the patentee’s incorrect belief that Form 27 must be filed as of the date of the filing of a patent application rather than the issuance of the patent. Because the patentee also filed Forms 27 dated as of 2013 for these patents, we have disregarded these spurious filings.</p>
</div>
<div id="ftn145">
<p style="text-align: justify; "><a name="_ftn145"></a> Based on the data provided by the Controller and Basheer, it appears that few, if any, Forms 27 were filed prior to 2009. Thus, we assumed that Forms 27, if filed, would only have begun to be filed in 2009. As discussed in note <a name="_ftnref"></a>, <i>supra</i>, the first patents that could be expected to have a filed Form 27 were issued in 1996 (i.e., one Form filed in 2009, the year of the patent’s expiration). Thus, beginning with patents issued in 1996, we calculated the total number of Forms 27 that could have been filed with respect to such patents beginning in 2009 and ending in 2016 (noting that we ended our study in August 2016). Thus, for patents issued in 1996 and expiring in 2009, one Form 27 could have been filed. For patents issued in 2002 to 2008, and expiring well after 2016, a total of eight Forms 27 could have been filed, in each case beginning in 2009 and ending in 2016. Patents issued in 2015 could have at most one Form 27 filed. Though Form 27 is not required to be filed until the year after a patent has been granted, some patentees have made filings in the year of grant. We counted these filings, but did not count year-of-grant filings in determining the maximum number of filings that could be made for a particular patent.</p>
</div>
<div id="ftn146">
<p><a name="_ftn146"></a> <i>See supra </i>text accompanying note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn147">
<p><a name="_ftn147"></a> It is not surprising that no forms were available for patents issued prior to 2007, the first year that the Indian Controller of Patents drew attention to the Form 27 requirement. <i>See supra</i> Part I.D.</p>
</div>
<div id="ftn148">
<p><a name="_ftn148"></a> For patents that had different working designations in Forms 27 filed in different years, we counted a patent to be declared as worked if at least one Form 27 so designated the patent.</p>
</div>
<div id="ftn149">
<p><a name="_ftn149"></a> <i>See supra </i>text accompanying note <a name="_ftnref"></a>.</p>
</div>
<div id="ftn150">
<p><a name="_ftn150"></a> <i>See </i>Basheer Writ Petition, <i>supra </i>note <a name="_ftnref"></a>, at 10.</p>
</div>
<div id="ftn151">
<p><a name="_ftn151"></a> Motorola, Form 27 for 243220, IɴPASS (Mar. 31, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/243220_2013/243220_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/243220_2013/243220_2013.pdf</a>.</p>
</div>
<div id="ftn152">
<p style="text-align: justify; "><a name="_ftn152"></a> Ericsson, Form 27 for 241488, IɴPASS (Feb. 3, 2012), <a href="http://ipindiaonline.gov.in/frm27/2011/241488_2011/241488_2011.pdf%20">http://ipindiaonline.gov.in/frm27/2011/241488_2011/241488_2011.pdf</a>(“The patentee is in the look out for appropriate working opportunities in a large scale although there may have been some use of the patented technology in conjunction with other patented technologies.”).</p>
</div>
<div id="ftn153">
<p style="text-align: justify; "><a name="_ftn153"></a> Google, Form 27 for 243210, IɴPASS (Mar. 27, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/243210_2014/243210_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/243210_2014/243210_2014.pdf</a>. <i>See infra </i>Part III.D for a discussion of patents as to which the patentee has changed the working status over the years.</p>
</div>
<div id="ftn154">
<p><a name="_ftn154"></a> <i>See, e.g.</i>, Ericsson, Form 27 for 209941, IɴPASS (Mar. 30, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/209941_2014/209941_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/209941_2014/209941_2014.pdf</a>.</p>
</div>
<div id="ftn155">
<p><a name="_ftn155"></a> <i>See, e.g.</i>, Ericsson, Form 27 for 259809, IɴPASS (Mar. 19, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/259809_2014/259809_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/259809_2014/259809_2014.pdf</a>.</p>
</div>
<div id="ftn156">
<p style="text-align: justify; "><a name="_ftn156"></a> Ericsson, Form 27 for 227819, IɴPASS (Mar. 13, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/227819_2014/227819_2014.pdf%20">http://ipindiaonline.gov.in/frm27/2014/227819_2014/227819_2014.pdf</a>(“The patentee is in the look out for appropriate working opportunities in a large scale”); Motorola, Form 27 for 236128, IɴPASS (Mar. 8, 2013), <a href="http://ipindiaonline.gov.in/frm27/2012/236128_2012/236128_2012.pdf%20">http://ipindiaonline.gov.in/frm27/2012/236128_2012/236128_2012.pdf</a>(“The Patentee is actively looking for licensees and customers to commercialise the invention in the Indian environment.”).</p>
</div>
<div id="ftn157">
<p><a name="_ftn157"></a> Alcatel-Lucent, Form 27 for 258507, IɴPASS (Mar. 18, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/258507_2014/258507_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/258507_2014/258507_2014.pdf</a>.</p>
</div>
<div id="ftn158">
<p><a name="_ftn158"></a> Panasonic, Form 27 for 239668, IɴPASS (Mar. 21, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/239668_2013/239668_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/239668_2013/239668_2013.pdf</a>; Panasonic, Form 27 for 208405, IɴPASS (Mar. 21, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/208405_2013/208405_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/208405_2013/208405_2013.pdf</a>.</p>
</div>
<div id="ftn159">
<p><a name="_ftn159"></a> Ericsson, Form 27 for 233994, IɴPASS (Mar. 6, 2013), <a href="http://ipindiaonline.gov.in/frm27/2012/233994_2012/233994_2012.pdf">http://ipindiaonline.gov.in/frm27/2012/233994_2012/233994_2012.pdf</a>.</p>
</div>
<div id="ftn160">
<p><a name="_ftn160"></a> <i>Id</i>.</p>
</div>
<div id="ftn161">
<p style="text-align: justify; "><a name="_ftn161"></a><i> See</i> Oracle, Form 27 for 230190, IɴPASS (Mar. 24, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/230190_2013/230190_2013.pdf%20">http://ipindiaonline.gov.in/frm27/2013/230190_2013/230190_2013.pdf</a>(“The methods/structures of the patent are generally related to "Asynchronous servers". This product has been sold to several businesses in India in the past few years and is believed to be used by them. Additional information will be enquired and provided to the Patent Office upon request.”).</p>
</div>
<div id="ftn162">
<p><a name="_ftn162"></a> Nokia Siemens, Form 27 for 254894, IɴPASS (Mar. 28, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/254894_2013/254894_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/254894_2013/254894_2013.pdf</a>.</p>
</div>
<div id="ftn163">
<p><a name="_ftn163"></a> Ericsson, Form 27 for 249058, IɴPASS (Mar. 03, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/249058_2013/249058_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/249058_2013/249058_2013.pdf</a>; In other Forms 27, however, Ericsson</p>
<p>provides significant detail regarding the standards/specifications covered by its patents.</p>
<p><i>See, e.g.</i>, Ericsson, Form 27 for 213723, IɴPASS (Mar. 16, 2016), <a href="http://ipindiaonline.gov.in/frm27/2015/213723_2015/213723_2015.pdf%20">http://ipindiaonline.gov.in/frm27/2015/213723_2015/213723_2015.pdf</a>(citing ETSI TS 126 092 V4.0.0 (2001-03), ETSI TS 126 073 V4.1.0 (2001-12) and ETSI TS 126 093 V4.0.0 (2000-12), all of which are pertinent to the UMTS 3G standard).</p>
</div>
<div id="ftn164">
<p><a name="_ftn164"></a> <i>See,</i> <i>e.g.</i>, Qualcomm, Form 27 for 251876, IɴPASS (Mar. 28, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/251876_2014/251876_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/251876_2014/251876_2014.pdf</a>(disclosing Indian licensee Innominds Software Pvt. Ltd.).</p>
</div>
<div id="ftn165">
<p><a name="_ftn165"></a><i> See</i> Ericsson, Form 27 for 213723, IɴPASS (Mar. 16, 2016), <a href="http://ipindiaonline.gov.in/frm27/2015/213723_2015/213723_2015.pdf">http://ipindiaonline.gov.in/frm27/2015/213723_2015/213723_2015.pdf</a>(referencing royalty payments from Micromax and Gionee).</p>
</div>
<div id="ftn166">
<p><a name="_ftn166"></a> Qualcomm, Form 27 for 251876, IɴPASS (Mar. 28, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/251876_2014/251876_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/251876_2014/251876_2014.pdf</a>.</p>
</div>
<div id="ftn167">
<p><a name="_ftn167"></a> <i>Id</i>.</p>
</div>
<div id="ftn168">
<p><a name="_ftn168"></a>Nokia, Form 27 for 220072, IɴPASS (Mar. 20, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/220072_2013/220072_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/220072_2013/220072_2013.pdf</a>.</p>
</div>
<div id="ftn169">
<p><a name="_ftn169"></a> Ericsson, Form 27 for 251757, IɴPASS (Mar 11, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/251757_2013/251757_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/251757_2013/251757_2013.pdf</a>.</p>
</div>
<div id="ftn170">
<p><a name="_ftn170"></a> <i>Id</i>.</p>
</div>
<div id="ftn171">
<p><a name="_ftn171"></a> <i>See, e.g.</i>, Ericsson, Form 27 for 248764, IɴPASS (Mar. 23, 2012)</p>
<p><a href="http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=gPYX0WsErIRQR3is4uM1fw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d">http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=gPYX0WsErIRQR3is4uM1fw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d</a>.</p>
</div>
<div id="ftn172">
<p style="text-align: justify; "><a name="_ftn172"></a> <i>See, e.g.</i>, Huawei, Form 27 for 251769, IɴPASS (Mar. 4, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/251769_2013/251769_2013.pdf%20">http://ipindiaonline.gov.in/frm27/2013/251769_2013/251769_2013.pdf</a>(“Information not readily available; efforts will be made to collect and submit further Information, if asked for.”).</p>
</div>
<div id="ftn173">
<p><a name="_ftn173"></a> <i>See, e.g.</i>, Hitachi, Form 27 for 226462, IɴPASS (Mar. 28, 2013), <a href="http://ipindiaonline.gov.in/frm27/2013/226462_2013/226462_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/226462_2013/226462_2013.pdf</a>(“Confidential Information will be provided if asked for.”).</p>
</div>
<div id="ftn174">
<p><a name="_ftn174"></a> Research in Motion, Form 27 for 261068, IɴPASS (Feb. 10, 2015), <a href="http://ipindiaonline.gov.in/frm27/2014/261068_2014/261068_2014.pdf">http://ipindiaonline.gov.in/frm27/2014/261068_2014/261068_2014.pdf</a>.</p>
</div>
<div id="ftn175">
<p><a name="_ftn175"></a> Ericsson, Form 27 for 254652, IɴPASS (Mar. 21, 2016), <a href="http://ipindiaonline.gov.in/frm27/2015/254652_2015/254652_2015.pdf">http://ipindiaonline.gov.in/frm27/2015/254652_2015/254652_2015.pdf</a>.</p>
</div>
<div id="ftn176">
<p><a name="_ftn176"></a> <i>See, e.g.</i>, Alcatel-Lucent, Form 27 for 202208, IɴPASS (Mar. 27, 2014), <a href="http://ipindiaonline.gov.in/frm27/2013/202208_2013/202208_2013.pdf">http://ipindiaonline.gov.in/frm27/2013/202208_2013/202208_2013.pdf</a>.</p>
</div>
<div id="ftn177">
<p><a name="_ftn177"></a> <i>See, e.g.</i>, Ericsson, Form 27 for 235605, IɴPASS (Feb. 23, 2011), <a href="http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=ghLLyAj0oCzH9pUf4tY2Kw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d">http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=ghLLyAj0oCzH9pUf4tY2Kw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d</a>; Ericsson, Form 27 for 235605, IɴPASS (Feb. 6, 2012), <a href="http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=ghLLyAj0oCzH9pUf4tY2Kw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d">http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=ghLLyAj0oCzH9pUf4tY2Kw%3d%3d&loc=wDBSZCsAt7zoiVrqcFJsRw%3d%3d</a>; Huawei, Form 27 for</p>
<p>249244, IɴPASS (Mar. 11, 2013), <a href="http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=9BzV82RULJkFoIPZZZeH9A%3d%3d&loc=+mN2fYxnTC4l0fUd8W4CAA%3d%3d">http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=9BzV82RULJkFoIPZZZeH9A%3d%3d&loc=+mN2fYxnTC4l0fUd8W4CAA%3d%3d</a>.</p>
</div>
<div id="ftn178">
<p><a name="_ftn178"></a> Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>, at 10.</p>
</div>
<div id="ftn179">
<p><a name="_ftn179"></a> A patentee may be imprisoned for submitting false information. The Patents Act, No. 39 of 1970, India Code, ß 122 (1970).</p>
</div>
<div id="ftn180">
<p><a name="_ftn180"></a> <i>See</i> Reddy & Kadri, <i>supra</i> note <a name="_ftnref"></a>, at 22; Basheer Writ Petition (2015), <i>supra</i> note <a name="_ftnref"></a>, at 10 (“authorities have never initiated action against any of the errant patentees.”).</p>
</div>
<div id="ftn181">
<p><a name="_ftn181"></a><i>See supra </i>text accompanying notes <a name="_ftnref"></a>-84.</p>
</div>
<div id="ftn182">
<p><a name="_ftn182"></a><i>See supra</i> Part III.C.3.c<i>.</i></p>
</div>
<div id="ftn183">
<p><a name="_ftn183"></a><i>See supra</i> Part III.C.3.d.</p>
</div>
<div id="ftn184">
<p><a name="_ftn184"></a> <i>See</i> <i>supra</i> Part III.C.3.e.</p>
</div>
<div id="ftn185">
<p style="text-align: justify; "><a name="_ftn185"></a> For example, as of 2015, more than 61,000 patent disclosures had been made against ETSI’s 4G LTE standard, and more than 43,000 against ETSI’s 3G UMTS standard, both of which are only one of many standards embodied in a typical mobile device. Justus Baron & Tim Pohlmann, <i>Mapping Standards to Patents Using Databases of Declared Standard-Essential Patents and Systems of Technological Classification</i> at 20, Table 5 (Regulation & Econ. Growth, Working Paper, 2015), <a href="http://www.law.northwestern.edu/research-faculty/searlecenter/innovationeconomics/documents/Baron_Pohlmann_Mapping_Standards.pdf">http://www.law.northwestern.edu/research-faculty/searlecenter/innovationeconomics/documents/Baron_Pohlmann_Mapping_Standards.pdf</a>.</p>
</div>
<div id="ftn186">
<p><a name="_ftn186"></a><i>See supra</i> Part III.B.</p>
</div>
<div id="ftn187">
<p><a name="_ftn187"></a> We thank Chris Cotropia for this insight.</p>
</div>
<div id="ftn188">
<p><a name="_ftn188"></a> 421 Forms 27 were found for Motorola. This total has been reduced by the 19 Forms filed in 2013 and incorrectly backdated to 2004 and 2005.</p>
</div>
<div id="ftn189">
<p style="text-align: justify; "><a name="_ftn189"></a> 101 Siemens patents expired prior to 1996.</p>
</div>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products'>https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products</a>
</p>
No publisherJorge L. Contreras, Rohini Lakshané and Paxton M. LewisAccess to KnowledgePervasive Technologies2018-01-23T15:09:30ZBlog Entry[Updated] Exclusive: OnePlus 5T’s Face Unlock feature may have infringed upon SensibleVision’s face recognition patents
https://cis-india.org/a2k/news/nachiket-mhatre-december-22-2017-exclusive-oneplus-5ts-face-unlock-feature-may-infringed-upon-sensiblevisions-face-recognition-patents
<b>The blog post by Nachiket Mhatre was published by mysmartprice on December 22, 2017.</b>
<h3 style="text-align: justify; ">Update</h3>
<p style="text-align: justify; ">We had reached out to OnePlus early in the morning yesterday (that is, December 22) for an official statement prior to publishing the post later in the evening. Even a day later, as of this update, OnePlus hasn’t issued any clarifying statement either confirming or denying the patent infringement claim made by SensibleVision.</p>
<p style="text-align: justify; ">We had also contacted George Brostoff, the CEO and Co-Founder of SensibleVision, regarding the legal ramifications of his claim and if SensibleVision is contemplating legal action against OnePlus. Brostoff issued the following statement in response:</p>
<p style="text-align: justify; "><em>“Actually the comment by the patent expert quoted in the linked article is spot on,”</em> noted Brostoff before issuing additional clarifying statement. <em>“Legal process is always SensibleVision’s last resort. We pursue legal patent infringement only with companies that we have approached first through non-legal means and if they choose to then use our patented technology in the markets that our patents cover. Some of our patents are US only. We see companies like OnePlus as our possible customers. </em><em>Our technology, both patented and proprietary, provides them with the possibility of better performance and more secure solutions. When companies license our solutions, they get the benefits of our broad patent portfolio and SensibleVision’s early entry into the market, something that helps minimize other companies claiming patent infringement against them. Unlike India, OnePlus currently has little to no US sales presence. So while they are on our partnership ‘radar’, they are not on our ‘legal’ radar for infringement.”</em></p>
<p style="text-align: justify; ">The gist of SensibleVision’s statement is that it probably won’t file a patent infringement lawsuit, but instead approach OnePlus to settle the matter amicably — say, by forging a Global Patent License Agreement (GPLA) — wherein OnePlus could be expected to pay to licence SensibleVision patents that are allegedly being employed in the OnePlus 5T’s Face Unlock system.</p>
<p style="text-align: justify; ">What’s interesting is Brostoff admitting that some of SensibleVision’s patents are valid only in the US, with him further insinuating that OnePlus’s sales volumes in the USA cannot justify prohibitive patent litigation costs.</p>
<p style="text-align: justify; ">We asked our resident patent expert, <a href="https://www.mysmartprice.com/gear/out/aHR0cDovL2Npcy1pbmRpYS5vcmcvYXV0aG9yL3JvaGluaQ==" rel="nofollow" target="_blank">Rohini Lakshane</a>, for her opinion on this statement and she confirmed that, in some cases, patent infringement settlements awarded by the US courts are in proportion to sales value and volume of the infringing products. In short, SensibleVision might not be too keen on taking the legal route against OnePlus, because the potential settlement payout might not be enough to cover the excessive cost of litigation in US patent courts.</p>
<p style="text-align: justify; "><em>The original story continues…</em></p>
<p style="text-align: justify; ">The <a href="http://www.mysmartprice.com/mobile/oneplus-5t-msp13539">OnePlus 5T</a>’s Face Unlock technology has been critically acclaimed across the board, with our personal experience too pegging the biometric security system as one of the fastest face recognition implementations available in the market today, while being seemingly secure and impenetrable to simple workarounds. Even as technology critics and consumers wonder if this piece of biometric security is too good to be true, there could be a patent war brewing on the horizon for OnePlus.</p>
<p style="text-align: justify; ">Speaking in an <a href="https://www.mysmartprice.com/gear/2017/12/22/interview-with-george-brostoff-sensiblevision-face-recognition-android-apple-faceid/">interview with MySmartPrice</a>, the CEO and Co-Founder of <a href="https://www.mysmartprice.com/gear/out/aHR0cDovL3d3dy5zZW5zaWJsZXZpc2lvbi5jb20vZW4tdXMvYWJvdXQvYWJvdXR1cy5hc3B4" rel="nofollow" target="_blank">SensibleVision</a>, George Brostoff, claimed that OnePlus might have infringed upon at least one of the patents belonging to the biometric security solutions provider. He also revealed that, in addition to other unspecified face recognition patents, OnePlus may have employed SensibleVision’s patent pertaining to the use of the screen as an illuminator. In fact, Brostoff claims to have notified <em>“several companies”</em> about their infringement of that particular patent.</p>
<p style="text-align: justify; "><em>“This is nothing new. We have been doing this for years. It even appears that they may be using several patented technologies,”</em> said George Brostoff when asked what he made of OnePlus 5T’s Face Unlock implementation. <em>“We have not licensed our patents to OnePlus or their supplier. From the video on Forbes, they are likely infringing at the very least on our illumination patent.”</em></p>
<h2 style="text-align: justify; ">Analysis from a patent and IP expert</h2>
<p style="text-align: justify; ">Brostoff refused to divulge further details citing that SensibleVision has since handed the matter over to its legal firm, which probably means that we might hear more about this in the near future. Patent infringement claims in particular are extremely difficult to verify, so we spoke with Rohini Lakshane, who’s a Public Policy Researcher with extensive experience on patent and intellectual property regulation for more insight into the matter and an expert analysis on what this potential patent spat could entail.</p>
<p style="text-align: justify; "><em>“SensibleVision is a US company. Patents are valid only in the jurisdiction where they have been granted. Unless the company has registered a patent application or was awarded one for face recognition in China, there is no infringement. That is with respect to sale of the devices in China. With respect to sale in India, again, SensibleVision needs to have registered the patents in India,”</em> explains Lakshane.<em> “The way licensing works is the companies that hold many patents for a particular technology often license entire patent portfolios for use anywhere in the world. This is called Global Patent Licence Agreement (GPLA). This is usually confidential. What patents and how many are in the portfolio and what are the licensing terms [Editor’s note: in other words, how much money changes hands, among other things] is also confidential.”</em></p>
<p style="text-align: justify; ">From what Brostoff has revealed to us during the course of the interview, there seems to be no patent sharing agreement between OnePlus and SensibleVision to our knowledge. While it’s not easy to file and win patent lawsuits against Chinese companies in China, Lakshane suggests that SensibleVision can at least potentially begin patent infringement proceedings in the USA, where it has filed for the aforementioned patent.</p>
<p style="text-align: justify; ">However, all of this is conjecture from an expert in the field, as there’s no concrete corroborating proof legitimising SensibleVision’s patent infringement claims against OnePlus either. We have contacted OnePlus for its response on the matter, and will update this article with the official statement, so keep watching this space.</p>
<p style="text-align: justify; ">Read the original <a class="external-link" href="https://www.mysmartprice.com/gear/2017/12/22/exclusive-oneplus-5ts-face-unlock-feature-may-infringed-upon-sensiblevisions-face-recognition-patents/">story here</a></p>
<p>
For more details visit <a href='https://cis-india.org/a2k/news/nachiket-mhatre-december-22-2017-exclusive-oneplus-5ts-face-unlock-feature-may-infringed-upon-sensiblevisions-face-recognition-patents'>https://cis-india.org/a2k/news/nachiket-mhatre-december-22-2017-exclusive-oneplus-5ts-face-unlock-feature-may-infringed-upon-sensiblevisions-face-recognition-patents</a>
</p>
No publisherAdminAccess to KnowledgePervasive Technologies2018-01-17T01:07:51ZNews ItemCIS' Submission to DIPP and CGPDTM at meeting with IP Stakeholders
https://cis-india.org/a2k/blogs/cis-submissions-to-dipp-and-cgptdm-at-meeting-with-ip-stakeholders
<b>The Office of the Controller General of Patents, Designs and Trademarks held a meeting with IP stakeholders on December 7, 2017, chaired by the Secretary, DIPP, to take suggestions on improving procedures and functioning of the Office. Anubha Sinha attended the meeting and requested the DIPP to improve compliance of uploading Form 27s by patentees and ensure proper enforcement of related provisions within the Indian Patent Act, 1970. Additionally, we sent a detailed submission to the Office, drawing from our recent research. Thanks to Rohini Lakshane and Aman Goyal for their inputs. </b>
<h3 align="center" style="text-align: justify;"><strong>Submission to the Department of Industrial Planning and
Promotion (DIPP) at <a class="external-link" href="http://http://www.ipindia.nic.in/writereaddata/Portal/News/374_1_Meeting_Circular_for_Stakeholders_Meeting_at_Udyog_Bhawan_on_7-12-2017.pdf">Meeting with IP Stakeholders on 07 December, 2017</a></strong></h3>
<p> </p>
<p style="text-align: justify;" class="MsoListParagraphCxSpFirst">1. As the DIPP is aware, the Indian
mobile device manufacturing industry is mired in issues related to licensing of
standard essential patents (SEPs). Disputes have resulted in imposition of
heavy interim royalty rates on Indian manufacturers, payable to foreign SEP
holders. Section 146(2) of the Patent Act, 1970 mandates patentees to provide
information on working of patents, which is crucial for willing licensees to access patent working information in a timely manner.
This requirement, that the details of patent working be disclosed by patentees
supports the goal of making unworked patents available for compulsory licensing
in India, both to promote economic development and public access to patented
products. Penalties for failing to furnish such information (via Form 27) are
steep, potentially resulting in fines or imprisonment.</p>
<p style="text-align: justify;" class="MsoListParagraphCxSpMiddle">2. We note that in 2009, 2013 and 2015
the Controller issued public notices calling on patent owners to comply with
their obligations to file statements of working on Form 27. Further, on
February 12, 2013, the Indian Patent Office (IPO) announced plans to make Form
27 submissions for the year 2012 available to the public via the IPO website.</p>
<p style="text-align: justify;" class="MsoListParagraphCxSpMiddle">3. We commend the efforts of the IPO, however,
our empirical research on ICT innovations<a name="_ednref1" href="#_edn1"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[i]</span></span></a> as well as by Prof. Shamnad
Basheer (on ICT and pharmaceutical sector)<a name="_ednref2" href="#_edn2"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[ii]</span></span></a> reveals that there are serious
lapses as far as compliance and enforcement of statutory provisions mandating
filing of Form 27 are concerned.</p>
<p style="text-align: justify;" class="MsoListParagraphCxSpLast">4. In the past year, we studied data
available from 2009- 2016 for the mobile device sector, and could only identify
and access 4,916 valid Forms 27, corresponding to 3,126 mobile device patents,
leaving 1,186 Indian patents for which a
Form 27 could have been filed, but was not found.<a name="_ednref3" href="#_edn3"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[iii]</span></span></a> For a surprising number of Form 27s (3%) the
working status of the relevant patent was not designated.</p>
<p style="text-align: justify;">Even among the Form 27s that had been
obtained, almost none contained useful information regarding the working of the
subject patents or fully complying with the informational requirements of the
Indian Patent Rules. Many patentees simply omitted required descriptive
information from their forms without any explanation.<a name="_ednref4" href="#_edn4"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[iv]</span></span></a></p>
<p style="text-align: justify;">Via our research we also gathered
complaints raised by patentees and industry observers regarding the structure
of the Form 27 requirement itself. For example, patents covering complex,
multi-component products that embody dozens of technical standards and
thousands of patents may not necessarily be amenable to the individual-level
data requested by Form 27.</p>
<p style="text-align: justify;" class="MsoListParagraphCxSpFirst">5. Regardless, we submit that these
technical difficulties should not hinder the critical statutory requirement
placed on patent holders to diligently comply with Form 27 compliance. In the
context of licensing of SEPs, several stakeholders recently suggested solutions
as revealed from our study of the submissions made to the TRAI Consultation on
Promoting Local Telecom Manufacturing<a name="_ednref5" href="#_edn5"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[v]</span></span></a>:</p>
<ul><li>Two
industry associations, namely Telecom Equipment Manufacturers Association of
India (TEMA) and Telecom Equipment & Services Export Promotion Council (TEPC) and a telecommunication
enabler Vihan Network Limited recommended that a modified and longer version of Form 27 (Form 27S) may be designed for SEP
holders that should apply right at the filing stage. Section 159 of the
Patent Act, 1970 empowers the central government to make such modifications to the form, as necessary.<a name="_ednref6" href="#_edn6"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[vi]</span></span></a></li><li>Further,
Prof. T Ramakrishna (MHRD Chair on Intellectual Property Rights) at NLSIU, specifically
recommended that Form 27 may be amended
to include a new column, which may require the patent holder to declare
if their patent forms a part of any standard and in case of affirmative answer
– the name of the Standard Setting Organisation and corresponding standard of
which it is a part.</li></ul>
<p style="text-align: justify;" class="MsoListParagraphCxSpMiddle"> 6. Further, we would like to draw
attention to how our study was limited by the technical capabilities of the
Indian Patent Office’s online Form 27 repository, such as<a name="_ednref7" href="#_edn7"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[vii]</span></span></a>:</p>
<ul><li>IPAIRS
returned either a 404 error or Connection Time Out ("site is taking too
long to respond") <a href="http://ipindiaonline.gov.in/patentsearch/search/index.aspx">http://ipindiaonline.gov.in/patentsearch/search/index.aspx</a>. In our opinion, it could be
redirected to InPASS as it uses the same search engine as InPASS. Further, <a href="http://ipindia.nic.in/patsea.htm">http://ipindia.nic.in/patsea.htm</a> returned a 404 error.</li><li>Some
PDFs of the forms comprise scanned image files without OCR of the text. This
makes them inaccessible to the visually impaired, and prevents search and
discoverability of their content. This also makes them less usable by
preventing copying and selection of text.</li><li>In some cases, it was difficult to identify
which one in the list of documents associated with a patent is Form 27, because
of obscure filenames.</li></ul>
<ul>
<ul><li>
<p>For
example, for Patent Number 262228, Form 27 was named 68.262228.pdf, as found on
IPAIRS.</p>
</li><li>
<p>For
Patent number 260603, the filename for Form 27 was "ipindiaonline.gov.in_epatentfiling_online_frmPreview.asp.pdf"
on IPAIRS.</p>
</li></ul>
</ul>
<ul><li>Inconsistency in search results found on
IPAIRS. Searching for the peripheral documents of the patents, returned the
results, "No PDF found" for one full week. The next week, the
documents started showing. Some searches returned results for an entirely
different patent number.</li><li>Sometimes,
Form 27 found on InPASS was not found on IPAIRS and vice versa.</li><li>Runtime
errors occur due to browser caching.</li></ul>
<p style="text-align: justify;" class="MsoListParagraphCxSpLast">7. We are thankful to DIPP for the
opportunity to make these submissions. It would be our pleasure and privilege
to discuss these submissions and recommendations in details with the DIPP. We
also offer our assistance on other matters aimed at developing a suitable
policy framework for SEPs and FRAND in India, and, working towards sustained
innovation, manufacture and availability of mobile technologies in India.<br /></p>
<p style="text-align: justify;" class="MsoListParagraphCxSpLast"></p>
<p align="center" style="text-align: center;"><strong>Annexure</strong></p>
<p align="center" style="text-align: center;">Complete Data of CIS’
Study<a name="_ednref1" href="#_edn1"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[i]</span></span></a></p>
<p align="center" style="text-align: center;"><img src="https://cis-india.org/Screenshot47.png/image_preview" alt="Data" class="image-inline image-inline" title="Data" /> </p>
<p align="left" style="text-align: center;"><img src="https://cis-india.org/copy_of_Screenshot46.png/image_preview" alt="Data2" class="image-inline" title="Data2" /></p>
<p align="center" style="text-align: center;"> </p>
<p> </p>
<div><br />
<hr align="left" size="1" width="33%" />
<div id="edn1">
<p class="MsoEndnoteText"><a name="_edn1" href="#_ednref1"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[i]</span></span></a> See Contreras, Jorge L. and Lakshané,
Rohini and Lewis, Paxton<em>, Patent Working
Requirements and Complex Products</em> (October 1, 2017). NYU Journal of
Intellectual Property & Entertainment Law; Available at SSRN: <a href="https://ssrn.com/abstract=3004283" target="_blank">https://ssrn.com/abstract=3004283</a></p>
</div>
<div id="edn2">
<p class="MsoEndnoteText"><a name="_edn2" href="#_ednref2"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[ii]</span></span></a> See Shamnad Basheer, <em>Making
Patents Work: Of IP Duties and Deficient Disclosures</em>, 7 QUEEN MARY J.
INTELL. PROP. 3, 16-17 (2017).</p>
</div>
<div id="edn3">
<p class="MsoEndnoteText"><a name="_edn3" href="#_ednref3"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[iii]</span></span></a> Supra note 1.</p>
</div>
<div id="edn4">
<p class="MsoEndnoteText"><a name="_edn4" href="#_ednref4"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[iv]</span></span></a> Refer to Appendix for a breakdown of
compliance of Form 27 by patent holders in the mobile device sector.</p>
</div>
<div id="edn5">
<p class="MsoEndnoteText"><a name="_edn5" href="#_ednref5"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[v]</span></span></a> See TRAI’s Consultation Paper on
Promoting Local Telecom Equipment Manufacturing dated 18.09.2017 and the
responses, available here: <a href="http://trai.gov.in/consultation-paper-promoting-local-telecom-equipment-manufacturing?page=2">http://trai.gov.in/consultation-paper-promoting-local-telecom-equipment-manufacturing?page=2</a></p>
</div>
<div id="edn6">
<p class="MsoEndnoteText"><a name="_edn6" href="#_ednref6"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[vi]</span></span></a> Section 159 of the Patent Act, 1970
empowers the central government to make rules. Accordingly, the Rule 131 of the
Patents Rules, 2003 prescribes Form 27 as the manner in which section 146(2) of
the Act is to be implemented.</p>
</div>
<div id="edn7">
<p class="MsoEndnoteText"><a name="_edn7" href="#_ednref7"><span class="MsoEndnoteReference"><span class="MsoEndnoteReference">[vii]</span></span></a> An email by Rohini Lakshane (CIS)
compiling these issues was sent to Dr. K.S. Kardam (Senior Joint Controller of
Patents and Designs - Indian Patent Office) on 09.09.2017.</p>
<p class="MsoEndnoteText"><br />[viii] See Contreras, Jorge L. and Lakshané,
Rohini and Lewis, Paxton<em>, Patent Working
Requirements and Complex Products</em> (October 1, 2017). NYU Journal of
Intellectual Property & Entertainment Law; Available at SSRN: <a href="https://ssrn.com/abstract=3004283" target="_blank">https://ssrn.com/abstract=3004283</a></p>
</div>
</div>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/cis-submissions-to-dipp-and-cgptdm-at-meeting-with-ip-stakeholders'>https://cis-india.org/a2k/blogs/cis-submissions-to-dipp-and-cgptdm-at-meeting-with-ip-stakeholders</a>
</p>
No publishersinhaDIPPPatentsAccess to KnowledgePervasive Technologies2017-12-13T14:31:54ZBlog EntryRTI request to Indian Patents Office for Form 27 (Statement of Working of patents), March 2016
https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016
<b>The Centre for Internet and Society filed this request under the Right to Information Act in March 2016 as part of research for the paper: Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance (July 2017). We sought forms pertaining to 61 of the patents found in our patent landscaping study. These forms were not available on the online public databases, InPASS and IPAIRS, at the time of the filing the RTI request. Research assistance was provided by intern Shreshth Wadhwa.</b>
<p class="normal" style="text-align: justify; "><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3004283">Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance</a> (July 2017)</p>
<p class="normal" style="text-align: justify; ">Patent landscaping study -- <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486">Patents and Mobile Devices in India: An Empirical Survey</a> (April 2016)</p>
<p class="normal" style="text-align: justify; ">We filed our first application under the RTI Act with the Controller General of Patents, Designs and Trade Marks in Mumbai in June 2015 for procuring Form 27 not available through their online databases, but received a generic response about how to download Form 27 from the online databases. The IPO also stated, “The desired information relates to about 1700 patents for all the years, to supply and trace out the information physical form requires huge humane resource and need to divert the office staff for some days which would hampers the day-todays- official work therefore, the information is proactively disclosed in the office website for the public”. (View the application and response <a class="external-link" href="http://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015">here</a>)</p>
<p class="normal" style="text-align: justify; ">In view of this response, we filed another RTI application with the same office in March 2016, and restricted the number of patents to 61. The patents represent a cross-section of owners in our landscaping study. (View <a href="https://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents">methodology</a>). We also stated in the RTI request that we had already searched the online databases for the forms and did not find any. The IPO replied in April 2016 that it could provide CIS with forms for eleven of the requested patents. As for the rest of the forms, the IPO stated, “As thousand of Form-27 are filed in this office, it is very difficult to segregate Form-27 for the patent numbers enlisted in your RTI application as it needs diversion of huge official/ staff manpower and it will affect day to day work of this office.”</p>
<p class="normal" style="text-align: justify; ">A few days after CIS received the reply from the IPO, Form 27 pertaining to patents in the landscape happened to start appearing on InPASS and IPAIRS E-register portal.</p>
<h3 class="normal" style="text-align: justify; ">Text of the application and the IPO’s response</h3>
<p style="text-align: justify; ">(View a scanned copy of the application <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-app-2016.pdf/at_download/file">here</a> and of the response <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-reply-2016.pdf/at_download/file">here</a>)</p>
<p class="normal" style="text-align: justify; ">11 March 2016</p>
<p class="normal" style="text-align: justify; ">To</p>
<p class="normal" style="text-align: justify; ">Central Public Information Officer</p>
<p class="normal" style="text-align: justify; ">Office of the Controller General of Patents, Designs, and Trade Marks</p>
<p class="normal" style="text-align: justify; ">Boudhik Sampada Bhawan</p>
<p class="normal" style="text-align: justify; ">Near Antop Hill Post Office, S.M. Road,</p>
<p class="normal" style="text-align: justify; ">Antop Hill, Mumbai - 400037</p>
<p class="normal" style="text-align: justify; ">Dear Sir/ Madam,</p>
<p class="normal" style="text-align: justify; "><b> </b></p>
<p class="normal" style="text-align: justify; "><b>Subject: Request for information under section 6 of the Right To Information Act, 2005; regarding Form 27 submissions for patents</b></p>
<p class="normal" style="text-align: justify; "><b> </b></p>
<ol style="text-align: justify; ">
<li>Full name of the applicant: Ajoy Kumar</li>
<li>Address of the applicant: 194, 2<sup>nd</sup> C Cross, Domlur 2<sup>nd</sup> stage, Bangalore 560071</li>
<li><b>Details of the information required</b>: Please consider this an application under Section 6 of the Right To Information Act, 2005. This is an application for three pieces of information.</li>
</ol>
<p class="normal" style="text-align: justify; "><i> </i></p>
<p class="normal" style="text-align: justify; "><i>Firstly, </i>you are requested to provide us with the Form 27 submissions for all the following patents for all the years for which they are available.</p>
<p class="normal" style="text-align: justify; "><i>Secondly</i>, we also request a record of all the years for which such Form 27 submissions have not been made for each of the patents listed here.</p>
<p class="normal" style="text-align: justify; ">In the event that you do not possess these documents, please transfer this application to the concerned authority within five days of its receipt and inform us of the same; as mandated under Section 6(3) of the Act.</p>
<p class="normal" style="text-align: justify; "><b>Patent Numbers</b>:</p>
<ul style="text-align: justify; ">
<li>264868</li>
<li>264414</li>
<li>218424</li>
<li>236178</li>
<li>250862</li>
<li>264266</li>
<li>263473</li>
<li>264878</li>
<li>264343</li>
<li>257411</li>
<li>263618</li>
<li>258568</li>
<li>264451</li>
<li>222947</li>
<li>263817</li>
<li>258983</li>
<li>196731</li>
<li>256864</li>
<li>262863</li>
<li>264764</li>
<li>259008</li>
<li>196474</li>
<li>264532</li>
<li>265027</li>
<li>258788</li>
<li>248749</li>
<li>259831</li>
<li>265788</li>
<li>214641</li>
<li>252360</li>
<li>250406</li>
<li>209397</li>
<li>226831</li>
<li>235014</li>
<li>229789</li>
<li>265069</li>
<li>220354</li>
<li>254083</li>
<li>264352</li>
<li>231642</li>
<li>258698</li>
<li>261503</li>
<li>241959</li>
<li>214988</li>
<li>237117</li>
<li>264824</li>
<li>263358</li>
<li>235688</li>
<li>251240</li>
<li>236556</li>
<li>203034</li>
<li>203036</li>
<li>234157</li>
<li>203686</li>
<li>213723</li>
<li>229632</li>
<li>240471</li>
<li>241747</li>
<li>223183</li>
<li>243980</li>
<li>200572</li>
</ul>
<p style="text-align: justify; ">I submit that I have searched for copies of Form 27 filings of the above patents on the online portals of the Indian Patent Office, including the IPAIRS search engine and INPASS. As the search results did not yield the Form 27 documents, I am making this request under the Right To Information Act. Screenshots of three instances in which Form 27 was not found are attached in Annexure I. The respective patent numbers are mentioned along with the screenshots.</p>
<p class="normal" style="text-align: justify; ">[Annexure I]</p>
<p class="normal" style="text-align: justify; ">****************************************************************************************</p>
<p class="normal" style="text-align: justify; "><b>Response from the IPO (reproduced verbatim)</b></p>
<p class="normal" style="text-align: justify; "><b> </b></p>
<p class="normal" style="text-align: justify; ">Government of India</p>
<p class="normal" style="text-align: justify; ">Patent Office, Boudhik Sampada Bhavan</p>
<p class="normal" style="text-align: justify; ">S.M. Road, Near Post Office,</p>
<p class="normal" style="text-align: justify; ">Antop Hill, Mumbai 400037, India</p>
<p class="normal" style="text-align: justify; ">Email: <a href="mailto:mumbai-patent@nic.in">mumbai-patent@nic.in</a></p>
<p class="normal" style="text-align: justify; ">Website: <a href="http://www.ipindia.nic.in">www.ipindia.nic.in</a></p>
<p class="normal" style="text-align: justify; ">Letter No: RTI/ 03</p>
<p class="normal" style="text-align: justify; ">06/04/2016</p>
<p class="normal" style="text-align: justify; ">To,</p>
<p class="normal" style="text-align: justify; ">Shri Ajoy Kumar,</p>
<p class="normal" style="text-align: justify; ">194, 2<sup>nd</sup> C Cross,</p>
<p class="normal" style="text-align: justify; ">Domlur 2<sup>nd</sup> Stage</p>
<p class="normal" style="text-align: justify; ">Bangalore - 560071</p>
<p class="normal" style="text-align: justify; "><b>Sub: Supply of information sought under RTI Act, 2005 - reg.</b></p>
<p class="normal" style="text-align: justify; ">Sir,</p>
<p class="normal" style="text-align: justify; ">With reference to your application under the Right to Information Act, 2005 dated 16/03/2016 in this regard the detailed parawise information as follows.</p>
<ol style="text-align: justify; ">
<li>As thousand of Form-27 are filed in this office, it is very difficult to segregate Form-27 for the patent numbers enlisted in your RTI application as it needs diversion of huge official/ staff manpower and it will affect day to day work of this office.</li>
<li>It is difficult to create such a record for the Patent numbers; you have listed for the same reason given above.</li>
</ol>
<p class="normal" style="text-align: justify; ">However, copies of Form 27 for Patent nos. 222947, 259008, 258788, 250406, 235014, 203034, 203036, 234157, 203686, 213723, 240471 could be made available to you on paying prescribed copying charges of Rs. 480/- (120 x 4 = 480/-)</p>
<p class="normal" style="text-align: justify; ">Yours faithfully,</p>
<p class="normal" style="text-align: justify; ">Dr. Ujjwala Haldankar</p>
<p style="text-align: justify; ">Assistant Controller of Patents and Designs & Central Public Information Officer</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016'>https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016</a>
</p>
No publisherrohiniIntellectual Property RightsAccess to KnowledgePervasive Technologies2017-10-13T04:35:46ZBlog EntryRTI request to Indian Patents Office for Form 27 (Statement of Working of patents), 2015
https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015
<b>The Centre for Internet and Society filed this request under the Right to Information Act in 2015 as part of research for the paper: Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance (July 2017). We sought Form 27 (also known as Statements of Working) pertaining to randomly selected patents found in our patent landscaping study. These forms were not available on the online public databases, InPASS and IPAIRS, at the time of the filing the RTI request. Research assistance was provided by intern Nayana Dasgupta.</b>
<ul>
<li><a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3004283">Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance</a> (July 2017)</li>
</ul>
<ul>
<li>Patent landscaping study -- <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486">Patents and Mobile Devices in India: An Empirical Survey</a> (April 2016)</li>
</ul>
<p class="normal" style="text-align: justify; ">This was our first RTI request filed with the Controller General of Patents, Designs and Trade Marks for the research on practices and compliance of patent holders to the Form 27 requirement. The response contained generic instructions about how to download Form 27 from the publicly-accessible online databases. The IPO also stated that, “The desired information relates to about 1700 patents for all the years, to supply and trace out the information physical form requires huge humane resource and need to divert the office staff for some days which would hampers the day-todays- official work therefore, the information is proactively disclosed in the office website for the public”.</p>
<p class="normal" style="text-align: justify; ">We subsequently filed another RTI request with the Indian Patents Office while limiting the number of patents to 61. (View the application and response <a class="external-link" href="http://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016">here</a>).</p>
<h3 class="normal" style="text-align: justify; ">Text of the application and IPO's response</h3>
<p style="text-align: justify; ">(View a scanned copy of the application <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-app-2015.pdf/at_download/file">here</a> and the response <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-reply-2015.pdf/at_download/file">here</a>)</p>
<p style="text-align: justify; ">10 June 2015</p>
<p style="text-align: justify; ">To<br />Central Public Information Officer<br />Office of the Controller General of Patents, Designs, and Trade Marks<br />Boudhik Sampada Bhawan<br />Near Antop Hill Post Office, S.M. Road,<br />Antop Hill, Mumbai - 400037<br /><br />Dear Sir/ Madam,</p>
<p class="normal" style="text-align: justify; "><b>Subject: Request for information under section 6 of the Right To Information Act, 2005; regarding Form 27 submissions for patents</b></p>
<ol style="text-align: justify; ">
<li>Full name of the applicant: Ajoy Kumar</li>
<li>Address of the applicant: 194, 2<sup>nd</sup> C Cross, Domlur 2<sup>nd</sup> stage, Bangalore 560071</li>
<li><b>Details of the information required</b>: Please consider this an application under Section 6 of the Right To Information Act, 2005. This is an application for three pieces of information.</li>
</ol>
<p class="normal" style="text-align: justify; "><i> </i></p>
<p class="normal" style="text-align: justify; "><i>Firstly, </i>you are requested to provide us with the Form 27 submissions for all the following patents for all the years for which they are available.</p>
<p class="normal" style="text-align: justify; "><i>Secondly</i>, we also request a record of all the years for which such Form 27 submissions have not been made for each of the patents listed here.</p>
<p class="normal" style="text-align: justify; "><i>Thirdly, </i>we request a record of all the patents among those listed here which do not have a single Form 27 submission from the year of application/ grant.</p>
<p class="normal" style="text-align: justify; ">In the event that you do not possess these documents, please transfer this application to the concerned authority within five days of its receipt and inform us of the same; as mandated under Section 6(3) of the Act.</p>
<p class="normal" style="text-align: justify; ">[List of patent numbers]</p>
<p class="normal" style="text-align: justify; ">*************************************************************</p>
<p class="normal" style="text-align: justify; "><b>Response from the IPO (reproduced verbatim)</b></p>
<p class="normal" style="text-align: justify; "><b> </b></p>
<p class="normal" style="text-align: justify; ">Government of India</p>
<p class="normal" style="text-align: justify; ">Patent Office, Boudhik Sampada Bhavan</p>
<p class="normal" style="text-align: justify; ">S.M. Road, Near Post Office,</p>
<p class="normal" style="text-align: justify; ">Antop Hill, Mumbai 400037, India</p>
<p class="normal" style="text-align: justify; ">Email: <a href="mailto:mumbai-patent@nic.in">mumbai-patent@nic.in</a></p>
<p class="normal" style="text-align: justify; ">Website: <a href="http://www.ipindia.nic.in">www.ipindia.nic.in</a></p>
<p class="normal" style="text-align: justify; ">No. RTI/Mum/38</p>
<p class="normal" style="text-align: justify; ">Date: 17/06/2015</p>
<p class="normal" style="text-align: justify; ">To,</p>
<p class="normal" style="text-align: justify; ">Shri Ajoy Kumar,</p>
<p class="normal" style="text-align: justify; ">194, 2<sup>nd</sup> C Cross,</p>
<p class="normal" style="text-align: justify; ">Domlur 2<sup>nd</sup> Stage</p>
<p class="normal" style="text-align: justify; ">Bangalore - 56007</p>
<p class="normal" style="text-align: justify; "><b>Sub: Supply of information sought under RTI Act - reg.</b></p>
<p class="normal" style="text-align: justify; ">Sir,</p>
<p class="normal" style="text-align: justify; ">With reference to your application under RTI, dated 15.06.2015, wherein the information sought for form 27 details (commercial working of patent) for all the years for about 1700 patents application.</p>
<p class="normal" style="text-align: justify; ">Reply:</p>
<p class="normalCxSpMiddle" style="text-align: justify; ">a) The requested information can be had from the office website for the filing of form 27 <a href="http://www.ipindia.nic.in">www.ipindia.nic.in</a>,, go to http;//ipindiaservices.in/workingofpatents/</p>
<p class="normalCxSpMiddle" style="text-align: justify; ">b) Pelase see the print screen from where one can access the desired information</p>
<p class="normal" style="text-align: justify; ">[Screenshot from ipindiaservices.gov.in/workingofpatents]</p>
<p class="normalCxSpMiddle" style="text-align: justify; ">c) Or the desired information also can be obtained under section 153, Rule.27 of the patents Act and Rules, as the information can be inspected the physical records under the Act.</p>
<p class="normal" style="text-align: justify; ">d) The desired information relates to about 1700 patents for all the years, to supply and trace out the information physical form requires huge humane resource and need to divert the office staff for some days which would hampers the day-todays- official work therefore, the information is proactively disclosed in the office website for the public.</p>
<p class="normal" style="text-align: justify; ">[Screenshots from ipindiaservices.gov.in/workingofpatents]</p>
<p class="normal" style="text-align: justify; ">Thanking you,</p>
<p class="normal" style="text-align: justify; ">Yours faithfully</p>
<p class="normal" style="text-align: justify; ">(N. Ramchander)</p>
<p class="normal" style="text-align: justify; ">Astt. Controller of Patents & Designs</p>
<p class="normal" style="text-align: justify; ">& CPIO, Patent Office, Mumbai</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015'>https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015</a>
</p>
No publisherrohiniIntellectual Property RightsAccess to KnowledgePervasive Technologies2017-10-13T04:37:13ZBlog EntryDataset for "Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance"
https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance
<b>Dataset of the first comprehensive and systematic analysis of 4,916 valid Statements of Working (Form 27) corresponding to 3,126 patents pertaining to mobile technology in India. Licensed CC-BY-SA 4.0.</b>
<ul>
<li><a class="external-link" href="http://cis-india.org/a2k/files/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance.xlsx">Dataset for "Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance"</a> (.xlsx)</li>
</ul>
<ul>
<li><a class="external-link" href="http://cis-india.org/a2k/files/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance.ods">Dataset for "Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance"</a> (.ods)</li>
</ul>
<ul>
</ul>
<p style="text-align: justify; ">The dataset has been released under the Creative Commons-Attribution-Share Alike 4.0 License (CC-BY-SA 4.0) as a part of the Pervasive Technologies project.</p>
<p style="text-align: justify; ">For the detailed methdology used for this study, refer to <a class="external-link" href="http://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents">Methodology: Statements of Working (Form 27) of Indian Mobile Device Patents<span class="external-link"></span></a>. For information on how to read this dataset, refer to the section "Detailed legend and process of logging the results" in the methodology.</p>
<p style="text-align: justify; ">A paper titled <a class="external-link" href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3004283">Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance </a>authored by Prof. Jorge Contreras and Rohini Lakshané, published in July 2017 presents an analysis of the dataset.</p>
<p style="text-align: justify; ">The patents chosen to be included in this dataset are a subset of the patents found in another study by the same authors, <a class="external-link" href="https://www.vanderbilt.edu/jotl/wp-content/uploads/sites/78/6.-Contreras-Web.pdf">Patents and Mobile Devices in India: An Empirical Survey</a> [PDF]. The <a class="external-link" href="https://cis-india.org/a2k/blogs/dataset-patent-landscape-of-mobile-device-technologies-in-india">dataset</a> for the patent landscaping study is available under the CC-BY-SA 4.0 license.</p>
<h3>License terms</h3>
<p style="text-align: justify; ">Data is provided AS-IS, without warranty as to accuracy or completeness.</p>
<p style="text-align: justify; ">All uses of the accompanying data and modifications and derivatives thereof must contain the following attribution: "Data provided by Jorge L. Contreras and Rohini Lakshané (2017)"</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance'>https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance</a>
</p>
No publisherrohiniAccess to KnowledgePervasive Technologies2017-09-10T15:11:38ZBlog EntryPatent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance
https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance
<b>India requires every patentee to file an annual statement, also known as “Form 27”, describing the working of each of its issued Indian patents. If a patent is not locally worked within three years of its issuance, any person may request a compulsory license, and if the patent is not adequately worked within two years of the grant of such a compulsory license, it may be revoked. The research paper on Form 27 practices and compliance by patentees authored by Prof Jorge L. Contreras, University of Utah, and Rohini Lakshané, Centre for Internet and Society has been accepted for publication in the NYU Journal of Intellectual Property and Entertainment Law.</b>
<p>The research paper by Prof Jorge L. Contreras, University of Utah, and Rohini Lakshané, Centre for Internet and Society was <a class="external-link" href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3004283">published on SSRN</a> on July 17, 2017. The paper has been accepted for publication in the NYU Journal of Intellectual Property and Entertainment Law.</p>
<hr />
<p>The potency of India’s patent working requirement was demonstrated by the 2012 issuance of a compulsory license for Bayer’s patented drug Nexavar. In order to provide the public with information about patent working, India requires every patentee to file an annual statement on “Form 27” describing the working of each of its issued Indian patents.</p>
<p style="text-align: justify; ">We conducted the first comprehensive and systematic study of all Forms 27 filed with respect to a key industry sector: mobile devices. We obtained from public online records 4,916 valid Forms 27, corresponding to 3,126 mobile device patents. These represented only 20.1% of all Forms 27 that should have been filed and corresponded to only 72.5% of all mobile device patents for which Forms 27 should have been filed. Forms 27 were missing for almost all patentees, and even among Forms 27 that were obtained, almost none contained useful information regarding the working of the subject patents or fully complying with the informational requirements of the Indian Patent Rules. Patentees adopted drastically different positions regarding the definition of patent working, while several significant patentees claimed that they or their patent portfolios were simply too large to enable the reporting of required information. Many patentees simply omitted required descriptive information from their Forms without explanation.</p>
<p style="text-align: justify; ">The Indian government has made little or no effort to monitor or police compliance with Form 27 filings, undoubtedly leading to significant non-compliance. However, some of the complaints raised by patentees and industry observers may have merit. Namely, that patents covering complex, multi-component products that embody dozens of technical standards and thousands of patents are not necessarily amenable to the individual-level data requested by Form 27. We hope that this study will contribute to the ongoing conversation in India regarding the most appropriate means for collecting and disseminating information regarding the working of patents.</p>
<p style="text-align: justify; "><b><a class="external-link" href="http://cis-india.org/a2k/files/patent-working-requirements-and-complex-products">Download the Paper</a></b></p>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance'>https://cis-india.org/a2k/blogs/patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance</a>
</p>
No publisherrohiniPatentsAccess to KnowledgePervasive Technologies2017-10-13T04:32:49ZBlog EntryPreliminary Findings: Working Requirements for Complex Products under the Indian Patent System
https://cis-india.org/a2k/news/2nd-international-conference-on-standardisation-patents-and-competition-issues
<b>Prof. Jorge L. Contreras gave a talk on a forthcoming paper "Preliminary Findings: Working Requirements for Complex Products under the Indian Patent System" at the "2nd International Conference on Standardisation, Patents and Competition Issues" held on June 10 and 11, 2017 in New Delhi. The conference was organized by O.P. Jindal Global University.</b>
<p style="text-align: justify; ">The paper contains findings a study by Rohini Lakshane of CIS and Prof Jorge Contreras, University of Utah on the Statements of Working (Form 27) of the patents they found for their previous paper "Patents and mobile devices in India: An empirical survey". <a class="external-link" href="https://cis-india.org/a2k/files/working-requirements-for-complex-products-under-the-indian-patent-system">View the slide deck</a>. See the <a class="external-link" href="http://www.jgu.edu.in/jirico/conference-new-1.php">event website</a>. To read the Research Methodology <a class="external-link" href="https://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents">click here</a>.</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/news/2nd-international-conference-on-standardisation-patents-and-competition-issues'>https://cis-india.org/a2k/news/2nd-international-conference-on-standardisation-patents-and-competition-issues</a>
</p>
No publisherpraskrishnaAccess to KnowledgePervasive Technologies2017-08-22T13:48:08ZNews ItemReview Meeting for the Pervasive Technologies Project
https://cis-india.org/a2k/news/review-meeting-for-the-pervasive-technologies-project
<b>The Centre for Internet & Society in partnership with Beijing Normal University Institute for Internet Policy & Law organized a review meeting of the Pervasive Technologies project in Macau on February 20 - 21, 2017. </b>
<p style="text-align: justify; ">Sunil Abraham, Anubha Sinha, Rohini Lakshane and Vidushi Marda were speakers. Sunil introduced the participants to the Pervasive Technologies project. Anubha Sinha spoke on Intellectual Property in Mobile App Development in India. Vidushi Marda gave a talk on Competition Law and Standard Essential Patents. Rohini Lakshane gave a talk on Patent Landscaping in the Indian Mobile Device Marketplace. The agenda can be <a class="external-link" href="http://cis-india.org/a2k/files/review-meeting-pt-project.pdf">accessed here</a>.</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/news/review-meeting-for-the-pervasive-technologies-project'>https://cis-india.org/a2k/news/review-meeting-for-the-pervasive-technologies-project</a>
</p>
No publisherpraskrishnaAccess to KnowledgePervasive Technologies2017-03-22T14:25:50ZNews ItemPervasive Technologies Project in Hong Kong
https://cis-india.org/a2k/news/pervasive-technologies-project-in-hong-kong
<b>Digital Asia Hub and the United Nations University Institute on Computing and Society (UNU-CS) held a new networking initiative. Digital Asia Hub and the United Nations University Institute on Computing and Society co-hosted a series of events aimed at fostering engagement and knowledge sharing at the intersection of technology, society, law, policy and international development. </b>
<p>CIS shared its insights on the Pervasive Technologies project.</p>
<p><img src="https://cis-india.org/home-images/PosterofPTProject.jpg/@@images/d92ab03b-ab18-4507-a297-ca6f68e3e914.jpeg" alt="Pervasive Technologies" class="image-inline" title="Pervasive Technologies" /></p>
<p>
For more details visit <a href='https://cis-india.org/a2k/news/pervasive-technologies-project-in-hong-kong'>https://cis-india.org/a2k/news/pervasive-technologies-project-in-hong-kong</a>
</p>
No publisherpraskrishnaAccess to KnowledgePervasive Technologies2017-03-20T16:09:22ZNews ItemWorkshop on Competition Law and Policy
https://cis-india.org/a2k/news/workshop-on-competition-law-and-policy
<b>National School of Law India University and the Delegation of European Union to India jointly organized a workshop at Competition Commission of India in New Delhi from October 19 - 21, 2016. Anubha Sinha and Rohini Lakshané participated and made presentations. </b>
<p style="text-align: justify; ">The workshop was organized under the broader EU-India project titled "Capacity Building Initiative in Competition Area under Trade Development Programme" sponsored jointly by European Union Delegation and National Law School of India University, Bengaluru.</p>
<h3 style="text-align: justify; ">Download</h3>
<ul>
<li><a href="https://cis-india.org/a2k/blogs/workshop-brochure-cci.pdf" class="internal-link">Workshop brochure</a></li>
<li>Anubha Sinha's presentation on "<a href="https://cis-india.org/a2k/blogs/cci-presentation.pdf" class="internal-link">Investigation into the sub $100 Mobile Device Industry from IPR + Competition law lens</a>"</li>
<li>Rohini Lakshané's presentation on <a href="https://cis-india.org/a2k/blogs/cci-workshop-on-competition-law-and-policy.pdf" class="external-link">CCI Workshop on Competition Law and Policy Competition Policy and Internet</a></li>
</ul>
<p>
For more details visit <a href='https://cis-india.org/a2k/news/workshop-on-competition-law-and-policy'>https://cis-india.org/a2k/news/workshop-on-competition-law-and-policy</a>
</p>
No publisherpraskrishnaIntellectual Property RightsAccess to KnowledgePervasive Technologies2016-10-23T01:51:25ZNews ItemMethodology: Statements of Working (Form 27) of Indian Mobile Device Patents
https://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents
<b>In India, if a patent is not locally worked within three years of its issuance, any person may request a compulsory license, and if the patent is not adequately worked within two years of the grant of such a compulsory license, it may be revoked. In order to provide the public with information about patent working, India requires every patentee to file an annual statement on “Form 27” describing the working of each of its issued Indian patents. We conducted the first comprehensive and systematic study of all Forms 27 filed with respect to mobile devices. We tried to empirically establish the extent to which patentees and licensees comply with the statutory requirement to declare information about the working of their patents.
Research assistance was provided by interns Anna Liz Thomas and Nayana Dasgupta.</b>
<p style="text-align: justify; ">The research paper on patent landscape, <a class="external-link" href="https://www.vanderbilt.edu/jotl/wp-content/uploads/sites/78/6.-Contreras-Web.pdf">Patents and Mobile Devices in India: An Empirical Survey</a>, [PDF] was published in the Vanderbilt Journal of Transnational Law (2017).</p>
<p style="text-align: justify; ">The research paper on "Patent Working Requirements and Complex Products: An Empirical Assessment of India's Form 27 Practice and Compliance" has been published <a class="external-link" href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3004283">here</a> (July 2017).</p>
<p style="text-align: justify; ">The dataset of all the Form 27 studied for this paper has been published <a class="external-link" href="https://cis-india.org/a2k/blogs/dataset-for-patent-working-requirements-and-complex-products-an-empirical-assessment-of-indias-form-27-practice-and-compliance">here</a>.</p>
<hr />
<p><b>Research Questions</b></p>
<ol>
<li>How many annual Form 27 submissions have been made to the Indian Patent Office for 4,419 granted patents identified in the landscape of mobile device patents in India?</li>
<li>How many patents have no corresponding Form 27 filed yet?</li>
<li>How many Form 27 submissions from those found are defective?</li>
<li>Is there an identifiable pattern in the defects and discrepancies?</li>
<li>Is there any discernible trend in filing of Form 27 over time and with respect to patent owners?</li>
</ol>
<hr />
<p style="text-align: justify; ">The objective of this paper is to quantitatively determine the extent to which patentees and licensees comply with the statutory requirement to declare information about the working of their patents according to Section 146(2) of the Patents Act, 1970 read with Rule 131 of the Patent Rules, 2003.</p>
<p style="text-align: justify; "><i>Section 146(2): Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.</i></p>
<p style="text-align: justify; "><i>Rule 131: Form and manner in which statements required under section 146(2) to be furnished </i></p>
<ol>
<li style="text-align: justify; "><i>The statements shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licensee or his authorised agent.</i></li>
<li><i>The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.</i></li>
<li><i>The Controller may publish the information received by him under sub-section (1) or sub-section (2) of section 146.</i></li>
</ol>
<h2 style="text-align: justify; ">Object</h2>
<p style="text-align: justify; ">The research object is Form 27 submissions made annually to the Indian Patent Office for the 4,419 granted patents.</p>
<p style="text-align: justify; ">4,052 of these patents were identified in the landscape (“the patent landscape”) developed by the Centre for Internet and Society as a part of ongoing research on patents pertaining to sub-USD-100 mobile devices sold in India. The dataset of the patent landscape can be <a class="external-link" href="http://cis-india.org/a2k/blogs/dataset-patent-landscape-of-mobile-device-technologies-in-india">accessed here</a>. Another 367 patents pertaining to mobile technology identified during the landscaping exercise but excluded from it, were added to the initial set of 4,052 patents.</p>
<p style="text-align: justify; ">A blank copy of Form 27 is <a class="external-link" href="http://ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20-%20html/Forms/Form-27.pdf">available here</a>. The <i>pro forma</i> is defined as per Schedule II of Patent Rules, 2003.</p>
<h2 style="text-align: justify; ">Research Methods</h2>
<p>[Corresponding research questions</p>
<ol>
<li>How many annual Form 27 submissions have been made to the Indian Patent Office for 4,419 granted patents identified in the landscape of mobile device patents in India?</li>
<li>How many patents have no corresponding Form 27 filed yet?</li>
<li>How many Form 27 submissions from those found are defective?]</li>
</ol>
<h3>Outsourcing the searching of the submitted copies of Form 27 to a contractor</h3>
<p style="text-align: justify; ">Owing to the repetitive nature of the process for collecting the forms, as well the large scale of the project, the task of searching was outsourced to a contractor. Price quotations were invited from five data entry operators and two firms of patent attorneys. On the basis of the quotation, deliverable time, scope and nature of the results delivered, and quality assurance, the contract was awarded to one firm. The firm offered the best price for a commensurate deliverable time and assured quality of results.</p>
<h3 style="text-align: justify; ">Form 27 retrieval online</h3>
<p>Form 27 were searched from IPAIRS (Indian Patent Information Retrieval System) and InPASS (Indian Patent Advanced Search System) public databases of the Indian Patent Office.</p>
<p>InPASS has two features: Application Status and E-Register. We checked both features, in case forms not found through one could be located through the other. We indeed found that, sometimes, the forms not available on E-register could be found through the Application Status table, and vice versa.</p>
<h3>Case 1: Accessing form 27 using Application Status tab on INPASS</h3>
<ol>
<li>A search portal is located at ipindiaservices.gov.in/publicsearch.<br /><br /></li>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<li>Enter the patent number in the “Patent Number” search field without the kind codes (IN) and click on “Search”. E.g., for patent number IN263932B, enter ‘263932’ in the “Patent Number” field.</li>
<li>Once the queried patent is displayed, select the “Application Status” tab to access the list of documents that were filed for the requested patent.<br /><br /></li>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<li>In the Application Status tab, scroll down to the bottom to view “Application Status table”. Click on the “View Documents” button to access the list of the documents filed for the queried patent. A pop-up window opens with the results.<br /><br /></li>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy2_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<li style="text-align: justify; ">In the window, a list of hyperlinks to various documents is displayed. Sometimes Form 27/ working statement is explicitly named so. At other times, it may have a different title. Once you click on the form 27 link, a PDF file opens in a new tab. There may be more than one Form 27 in the list of documents as Form 27 is an annual submission.</li>
</ol>
<h3>Case 2: No record of Form 27 found (Application status tab)</h3>
<p style="text-align: justify; ">If the form is not present on InPASS, that is, if it has not been uploaded to the website, or if it has not been submitted to the Indian Patent Office (IPO), then it will not be displayed in the list of documents described in Case 1, step 5. Such instances have been logged as “No record found”.</p>
<h3 style="text-align: justify; ">Case 3: Accessing form 27 using E-Register tab on INPASS</h3>
<ol>
<li style="text-align: justify; ">At <a class="external-link" href="http://ipindiaservices.gov.in/publicsearch">http://ipindiaservices.gov.in/publicsearch</a>, a patent search portal is displayed. Enter the patent number by following the same steps as described in Case 1 until the queried patent is displayed. Select the “E-register” tab to access the e-register data corresponding to the queried patent.</li>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy3_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<li style="text-align: justify; ">In the “E-register” tab, scroll to the bottom to view the “Information u/s 146” table. The “Information u/s 146” table includes a list of Form 27 filed for the queried patent. As visible in the screenshot below, on clicking the “261762_2015” hyperlink, Form 27 for the queried patent opens. There could be multiple form 27s corresponding to different years.</li>
</ol>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy4_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<h3>Case 4: No record of Form 27 found (E-register)</h3>
<p style="text-align: justify; ">If the form is not present in the E-register, that is, if it has not been uploaded to the website or if it has not been submitted to the IPO, then the E-Register tab displays “Eregister Not Available”.</p>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy5_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<h3>Case 5: Searching on IPAIRS</h3>
<p style="text-align: justify; ">Both InPASS and IPAIRS fetch forms from the same URL. However, we observed that one search engine sometimes displays the forms when the other doesn’t. The IPAIRS search engine was used when Form 27 was not found on InPASS.</p>
<ol>
<li style="text-align: justify; ">IPAIRS patent search homepage: http://ipindiaonline.gov.in/patentsearch/search/index.aspx On the home page, in the Application Status tab, enter the full patent application number and CAPTCHA.</li>
<li style="text-align: justify; ">A window containing information pertaining to the patent application opens. At the bottom of the window, there is a “View Documents” button.</li>
<p style="text-align: center; "><img src="https://cis-india.org/home-images/copy6_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></p>
<li>On clicking on “View Documents”, a new window with list of hyperlinked documents opens as described in Case 1, Step 5.<br /><img src="https://cis-india.org/home-images/copy7_of_Pass.png" alt="Pass" class="image-inline" title="Pass" /></li>
</ol>
<p> </p>
<p>The URL for the new window displayed via “View Documents” on IPAIRS is the same as the URL displayed via “View Documents” in the “Application Status” tab on InPASS. For example, for patent number 263932, the URL for this window is the same on IPAIRS and InPASS: http://ipindiaonline.gov.in/patentsearch/GrantedSearch/viewdoc.aspx?id=Bx6eZ7YQLgsl3yH1LqKHjg==&loc=wDBSZCsAt7zoiVrqcFJsRw==</p>
<h3>Form 27 retrieval via Right To Information (RTI) requests</h3>
<p>CIS filed two requests under the RTI Act, 2005 with the Office of the Controller General of Patents, Designs, and Trade Marks in Mumbai.</p>
<ul>
<li>CIS' RTI application to the Indian Patent Office in Mumbai, March 2016 [<a class="external-link" href="https://cis-india.org/a2k/blogs/rti-app-2016.pdf/at_download/file">PDF]</a>. The IPO's reply, April 2016 [<a class="external-link" href="https://cis-india.org/a2k/blogs/rti-reply-2016.pdf/at_download/file">PDF</a>].</li>
</ul>
<p>(View text: <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016">https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-march-2016</a>)</p>
<ul>
</ul>
<ul>
</ul>
<ul>
</ul>
<ul>
<li>CIS' RTI application to the IPO in Mumbai, June 2015 [<a class="external-link" href="https://cis-india.org/a2k/blogs/rti-app-2015.pdf/at_download/file">PDF</a>]. The IPO's reply, June 2015 [<a class="external-link" href="https://cis-india.org/a2k/blogs/rti-reply-2015.pdf/at_download/file">PDF</a>].</li>
</ul>
<p>(View text: <a class="external-link" href="https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015">https://cis-india.org/a2k/blogs/rti-request-to-indian-patents-office-for-form-27-statement-of-working-of-patents-2015</a>)</p>
<ul>
</ul>
<p style="text-align: justify; ">InPASS and IPAIRS yielded Form 27 for 1,999 patents out of 4,419. For Form 27 pertaining to 61 of the remaining patents, CIS made a request in March 2016 under the Right to Information Act (2005) to the office of the Indian Patent Office located in Mumbai.</p>
<p style="text-align: justify; "><b>How the 61 patents were chosen<br /></b>37 of the 50 companies in the patent landscape owned granted patents. We took one patent from each of the 37 companies. [See <a class="external-link" href="http://cis-india.org/a2k/blogs/fifty-companies.pdf">Annexure 4</a> (PDF)of Methodology: Patent landscaping in the Indian mobile device market] The remaining were <a class="external-link" href="http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india">patents litigated in India</a>, as well as patents transferred from one of the companies in the landscape to another.</p>
<p style="text-align: justify; "><b>IPO’s reply to the March 2016 RTI application <br /></b>The IPO replied in April 2016 that it could provide CIS with forms for eleven of the requested patents. As for the rest of the forms, the IPO stated, “As thousand [sic] of Form-27 are filed in this office, it is very difficult to segregate Form-27 for the patent numbers enlisted in your RTI application as it needs diversion of huge official/ staff manpower and it will affect day to day [sic] work of this office.”</p>
<h3 style="text-align: justify; ">Repeating the Form 27 search online</h3>
<p style="text-align: justify; ">A few days after CIS received the reply from the IPO, Form 27 pertaining to patents in the landscape started appearing on InPASS and IPAIRS E-register portal. CIS’ contractor repeated the search for forms for all 4,419 patents as some forms filed in 2016 and 2015 were found. Forms for additional 1,003 patents were found, taking the number of patents with at least one corresponding form to 3,002.</p>
<p style="text-align: justify; ">Of the 1,417 patents for which forms were not found, 481 are either expired or there is no log corresponding to them in the E-Register.</p>
<h3 style="text-align: justify; ">Schema for the results</h3>
<p style="text-align: justify; ">Information from the Form 27 was logged into a spreadsheet with the following heads:<br />Serial Number -- Assignee -- Patent Number -- Status -- Application Date -- Grant Date -- Title -- Application Number -- Form 27 presence -- Multiple Forms -- Number of years -- Year -- If Worked -- Working/ Non-working Status -- Working/ Non-working Information -- Licensing Status -- Licensing Information -- Comments.</p>
<h3 style="text-align: justify; ">Detailed legend and process of logging the results</h3>
<p style="text-align: justify; "><b>Assignee</b>: Name of the company that owns the patent. <a class="external-link" href="http://cis-india.org/a2k/blogs/fifty-companies.pdf">Annexure 4</a> [PDF] lists 50 companies studied for the patent landscape. 37 of those companies owned patents in India. Thus, the assignee could be one of 37 companies among the 50 in Annexure 4. Where two assignees are mentioned, the patent was transferred from the second assignee to the first on account of sale of the patent, company merger, etc. For example, "Huawei|NEC" indicates that a patent that belonged to NEC was transferred to Huawei.</p>
<p style="text-align: justify; "><b>Form 27 presence: </b>Whether or not Form 27 was found. Entries in this column are either “Yes” or “No”. If case Form 27 was not found, the subsequent columns are unpopulated.</p>
<p style="text-align: justify; "><b>Multiple Forms: </b>If more than one Form 27 was found, the number of years for which it was found. In some cases, more than one form was found for the same patent for the same year. We have considered these instances as a single form for the same year and noted the defect in the “Comments” column.</p>
<p style="text-align: justify; "><b>Year</b>: The year for which the form was filed. This information was found in #2 of the pro forma of Form 27. In the case of patents with Form 27 filed for more than one year, the entries for different years have been logged into consecutive rows.</p>
<p style="text-align: justify; "><b>If Worked:</b> This information was found in 3(i) of the pro forma. Depending on whether the text of Form 27 states that the patent was “worked” or “not worked”, results have been logged as either “Yes” or “No”. In instances where it is not explicitly stated whether the patent has been worked or not, or where 3(i) is blank, the results are logged as “Not disclosed” with a description of the defect in the “Comments” column.</p>
<p style="text-align: justify; "><b>Working/ Non-working status: </b> Corresponds to 3(i)a in the case of patents stated as “worked” and to 3(i)b in the case of those stated as “not worked”. The results have been marked as:</p>
<ul>
<li>Description is generic (future use)</li>
<li>Description is generic (present use)</li>
<li>Description is specific</li>
<li>No description</li>
</ul>
<p style="text-align: justify; "><b>Description is generic (future use)</b>: No specific information been provided as required by 3(i)a or 3(i)b. The description indicates that in the future the patentee might “work” or license the patent or do both. E.g: “May be worked in the future depending on the market demand and when technology is mature.”</p>
<p>Or</p>
<p style="text-align: justify; ">“We are still assessing the commercial and technological aspects of working of this patent in India and negotiating marketing and distribution of patented product with related parties.”</p>
<p>Or</p>
<p>“Technical developments [sic] are still continuing” or “Negotiations and technical developments [sic] are still continuing”.</p>
<p style="text-align: justify; "><b>Description is generic (present use): </b>No specific information been provided as required by 3(i)a or 3(i)b. The description indicates that the patentee may be “working” the patent. E.g:, “DUE TO THE NATURE OF THE INVENTION, IT IS NOT POSSIBLE TO DETERMINE ACCURATELY WHETHER THE PATENTED INVENTION HAS BEEN WORKED IN INDIA OR NOT. Improvements in the invention are continuing to be made. The Patentee is actively looking for licensees and customers to commercialise the invention in the Indian environment.”</p>
<p>Or</p>
<p style="text-align: justify; ">“... This patent is among a large number of patents in the patentee’s complex portfolio which may cover the products services and embedded technologies provided by the patentee or its licensee(s) in India. This patent might worked [sic] in India in some of the patentee(s) existing or future products, services and embedded technologies. Given the extremely Iarge number of patents that may apply to any given product or service of the patentee, it is very difficult to Identify and accurately update which of those patents would apply to the numerous products, services and embedded technologies.”</p>
<p><b>Description is specific: </b>Specific information has been provided as required in 3(i)a or 3(i)b.</p>
<p>E.g, “Quantum of the patented product-303520 and value of the patented product in INR-2790524299”.</p>
<p><b>No description:</b> 3(i)a and 3(i)b are blank.</p>
<p style="text-align: justify; "><b>Working/non-working information:</b> Contains the full text of the descriptions mentioned in “Working/non-working status” column. These have been reproduced verbatim from Form 27 filings.</p>
<p style="text-align: justify; "><b>Licensing status: </b>States whether or not the patent has been licensed as per 3(ii) of the pro forma for Form 27. Results are logged as “Yes” (licensed), “No” (no-licensed), “Cross-licensed” and “Not disclosed”.</p>
<p style="text-align: justify; ">“Not disclosed” indicates that the response to 3(ii) is either blank or there is an explicit statement that licensing information would not be disclosed on Form 27. E.g: “As all the licenses are confidential in nature, the details pertaining to the same are not being disclosed herein and may be provided to the Patent Office as and when the same is specifically directed by the Patent Office under sealed cover so that such details are not laid open in public domain.”</p>
<p><b>Licensing information: </b>Contains the full text of the response reproduced verbatim from 3(ii). (Blank fields when there is no text in 3(ii))</p>
<p>For patents marked as licensed, this column contains the names and addresses of licensees and/ or sub-licensees.</p>
<p style="text-align: justify; ">For patents marked as not-licensed, this column is either blank or contains statements such as, “Information Not readily available; efforts will be made to collect and submit further information, if asked for.”, “None”, “No licensees”.</p>
<p style="text-align: justify; ">For patents marked as “cross-licensed”, the patentee states that it has a cross-licensing agreement with its licensees. E.g: “There is a cross license agreement between <company name> and at least one licensee, giving mutual rights to produce despite monopoly afforded by patents that are hold by any of the companies. There is no information available on whether the technology of said patent is included products sold by such licensee. As all the licenses are confidential in nature, the details pertaining to the same shall be provided under specific directions from the Patent Office.”</p>
<p><b>Comments: </b>Contains information about defects and notable observations from the Form 27 submissions.</p>
<h2>Validation of results</h2>
<p>Validation of the results was done via deduplication first and then random sampling of 10% of the results.</p>
<h2>Analysis of results</h2>
<p style="text-align: justify; ">[Corresponding research questions:<br />4. Is there an identifiable pattern in the defects and discrepancies?<br />5. Is there any discernible trend in filing of Form 27 over time and with respect to patent owners?]<br /><br />The results logged into the spreadsheet were analysed to find a pattern in the defects in the submissions. Visualisations will be created, if necessary.</p>
<h2 style="text-align: justify; ">Prior Art</h2>
<ol>
<li style="text-align: justify; ">Extraordinary writ petition in the matter of a public interest litigation, filed in the High Court of Delhi, Shamnad Basheer vs Union of India and others, C.M. No. 5590 of 2015 <a href="http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf">http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf</a> <br /><br />The petitioner(s) “sought to investigate the commercial working of certain patented inventions in India, particularly in relation to three key areas”. One of these areas include telecommunications technology. Para 53 to 58 of the writ elucidate on the petitioners’ observations and findings on “High technology patents and trolls”, while para 59 and 60 refer to the linkage between patents and products. Annexure P-8 of this petition contains copies of Form 27 filed by Ericsson in India. Annexure P-11 contains a “summary of findings of Form 27 investigations conducted by the petitioner”. Annexure P-4 (II. Telecommunications Sector) contains a list of 58 patents pertaining to the telecommunications domain in India. 21 of these are coincide with the patent landscape mentioned in “Research Object”.</li>
<li style="text-align: justify; ">Basheer had published a report in 2011 based on the findings of his RTI investigation of Form 27 pertaining to pharmaceutical patents in India. The report titled “RTI Applications and “Working” of Foreign Drugs in India?” is available at: <a href="http://www.spicyip.com/docs/Workingpatents.doc">http://www.spicyip.com/docs/Workingpatents.doc</a> The report sheds light on lack of filing, incomplete filing and violation of patent working norms by pharmaceutical companies. He states having encountered difficulties during the RTI process: <i>The RTI process was a very arduous one, with the patent office refusing information or claiming missing files in some cases. We had to resort to the appellate procedure in almost all cases. And in one case concerning the drugs Tarceva and Sutent, both the CPIO (Delhi office) and the appellate authority refused to provide information. We had to then take the matter up directly with Controller General PH Kurian who immediately ordered that the information be provided. Upon his instructions, the information was provided within 24 hours. However, we received this information only on the 4<sup>th</sup> of April 2011, more than 6 months since we began the RTI process! (Source:</i> Drug Firms and Patent "Working": Extent of Compliance with Form 27 <a href="http://spicyip.com/2011/04/drug-firms-and-patent-working-extent-of.html">http://spicyip.com/2011/04/drug-firms-and-patent-working-extent-of.html</a></li>
</ol>
<h2 style="text-align: justify; ">Limitations</h2>
<ol>
<li style="text-align: justify; ">If Form 27 is not found on InPASS or INPAIRS, it is not possible to determine if the form has not been submitted to the IPO or it has been submitted but the IPO has not uploaded it. There is no publicly available database or log where such information is available.</li>
<li style="text-align: justify; ">Technical issues with the IPAIRS website hampered the speed of searching for and downloading Form 27. At the time of trial run in May 2015, the website was not available for nearly a week. Technical issues also lead to conflicting search results on IPAIRS and INPASS at times. For example, the form may be available via one search engine but not via another, even though they are fetched the files from the same database. Runtime errors occur due to browser caching. </li>
<br /></ol>
<p><b>Edited, September 10, 2017: </b>To add -- URLs of the research paper on Form 27 published in July 2017, and of the dataset containing raw data, which was published and licensed CC-BY-SA 4.0.</p>
<ol> </ol>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents'>https://cis-india.org/a2k/blogs/methodology-statements-of-working-form-27-of-indian-mobile-device-patents</a>
</p>
No publisherrohiniIntellectual Property RightsPatentsAccess to KnowledgePervasive Technologies2017-09-10T15:19:51ZBlog EntrySub$-100 Phones: Browser Compatibility Tests
https://cis-india.org/a2k/blogs/sub-100-phones-browser-compatibility-tests
<b>This post documents the results of browser compatibility tests conducted on six out of eight specimen mobile phones being studied under the Pervasive Technologies project. These phones are Internet-enabled and cost the equivalent of USD 100 or less in India. Rohini Lakshané and CIS volunteer Dhananjay Balan carried out the tests. Intern Shreshth Wadhwa provided assistance.</b>
<ul>
<li>Names and descriptions of mobile phones under study: <a class="external-link" href="http://cis-india.org/a2k/blogs/annexure-1-mobile-phones-to-study.pdf">Annexure 1</a></li>
<li>How the phones under study were chosen: <a class="external-link" href="http://cis-india.org/a2k/blogs/patent-landscaping-in-the-indian-mobile-device-market">Section 3.2: Criteria for choosing the mobile phones</a></li>
</ul>
<hr />
<h3 style="text-align: justify; ">Research Question:</h3>
<p>What technical standards are browsers pre-installed in the eight test phones compatible with?</p>
<p>This question partially answers research question #2 in <a class="external-link" href="http://cis-india.org/a2k/blogs/patent-landscaping-in-the-indian-mobile-device-market">Methodology: Patent Landscaping in the Indian Mobile Device Market</a>, that is, what patents pertain to [technical] capabilities commonly found in networked mobile devices sold in India for USD 100 or less?</p>
<h3 style="text-align: justify; ">Method:</h3>
<p style="text-align: justify; ">We conducted tests on all browsers pre-installed, that is, installed by the manufacturer, on six mobile phones to understand their extent of compliance with technical standards for the web. All browsers were tuned to their default settings and no plugins or extensions were installed in them. The tests could not be run on two phones for reasons stated in "Limitations".<br /><br />For Android v4.0 (Ice Cream Sandwich) and higher versions, we set up a local host and automated all the tests by using a script. The local host was set up to expose sample HTTP endpoints. We tested all browsers through this server.<br /><br />A Shell script was used to acquire screenshots of the results of the tests:<br /><i>#!/bin/bash<br /><br />adb shell screencap -p $1<br />adb pull $1</i><br /><br />We collected screenshots of devices with Android versions below v4.0 by capturing the framebuffer since the shell command was introduced in v4.0.</p>
<p style="text-align: justify; "><b>Script:</b> Github - https://gist.github.com/dbalan/e58f51b713bfd6d711fd02061e27ca90 or <b><a href="https://cis-india.org/a2k/blogs/github" class="internal-link">Download as .zip</a></b>.</p>
<p style="text-align: justify; ">Android version numbers, where applicable, can be found in the “User Agent” row of the test results. We took photos of the screens for the rest of the devices.</p>
<h3 style="text-align: justify; ">Standards and capabilities tested:</h3>
<p><b>Browser Network Support</b></p>
<ol>
<li>HTTP/1.1</li>
<li>HTTP/2</li>
<li>SSL</li>
<br /></ol>
<p><b>Acid Tests</b></p>
<p>Acid tests 1, 2, and 3 (http://www.acidtests.org) were run on all phones.</p>
<p style="text-align: justify; ">Acid 1 tests for compliance to the CSS 1.0 standard; Acid 2 for HTML 4, CSS 2.1, PNG, and data URLs. Acid 3 for SVG, HTML, SMIL, Unicode, DOM, ECMAScript (Javascript), and CSS 3, among other parameters. Here is the full list of specifications tested by Acid 3: http://www.webstandards.org/action/acid3/x</p>
<p style="text-align: justify; "><b>Image Formats</b></p>
<ul>
<li>JPEG</li>
<li>GIF</li>
<li>PNG</li>
</ul>
<ul>
</ul>
<h3></h3>
<h3></h3>
<h3>Results</h3>
<p>View as <a href="https://cis-india.org/a2k/blogs/sub-100-mobile-phones-browser-compatibility-tests" class="internal-link">.ods</a>; View as <a class="external-link" href="http://cis-india.org/a2k/blogs/sub-100-phones-browser-compatibility">.xls</a></p>
<h3></h3>
<h3></h3>
<h3>Reading the results:</h3>
<p>User-agent string</p>
<p><i>Example 1: Micromax Canvas Engage A091<br />User-agent: Mozilla/5.0 (Linux; Android 4.4.2; Micromax A091 Build/A091) AppleWebKit/537.36 (KHTML, like Gecko) Chrome/34.0.1847.114 Mobile Safari/537.36</i></p>
<p style="text-align: left; "><b>Mozilla/5.0</b>: Mozilla Firefox browser, version number<br />This is a user-agent token.</p>
<p><b>Linux</b>: Linux kernel<b> </b></p>
<p><b>Android 4.4.2:</b> Operating system, version number<b> </b></p>
<p style="text-align: left; "><b>Micromax</b> <b>A091</b>: Device ID</p>
<p style="text-align: left; "><b>Build/A091:</b> Build number.</p>
<p style="text-align: left; ">This is a customised Android build by Micromax. (Build numbers of stock Android 4.4.2 are KOT49H and KVT49L).<b> </b></p>
<p style="text-align: left; "><b>AppleWebKit/537.36</b>: WebKit, version number. WebKit by Apple is a component of a layout engine that renders web pages in browsers. It is based on KHTML.KHTML: HTML layout engine developed by KDE. Licensed LGPL.</p>
<p style="text-align: left; "><b>like Gecko</b>: A browser that behaves like a Gecko browser<br /><b> </b></p>
<p style="text-align: left; "><b>Chrome/34.0.1847.114</b>: Chrome for Android browser, version number<br /><b> </b></p>
<p style="text-align: left; "><b>Mobile:</b> Either mobile browser or mobile device, or both <br /><b> </b></p>
<p style="text-align: left; "><b>Safari/537.36:</b> Apple Safari browser, version number</p>
<p><i>Example 2: Opal Cyher-Shot NX900<br />User-agent: Dorado WAP-Browser/1.0.0/powerplay/2</i></p>
<p><b>Dorado WAP-Browser/1.0.0:</b> User agent key, version</p>
<p>This is a WAP browser for mobile phones <a class="external-link" href="https://www.google.com/url?q=http://thadafinser.github.io/UserAgentParserComparison/v4/user-agent-detail/d5/a6/d5a63f05-4b47-48b9-bcf6-9f1ff3d90867.html%23&sa=D&ust=1468082385035000&usg=AFQjCNEAjT9HLfuO9JJIzoAKXm095JixAA">based on a Java engine</a>. <i><br /></i></p>
<h3>Observations:</h3>
<p>Browsers pre-installed on phones of Indian brands comply with all technical standards and capabilities tested for. All of these phones -- Intex, Lava and Micromax -- also run on the Android operating system. In the case of failed tests, the results are the same or similar for most mobile phones. For example, Opera Mini 7.5 on Intex Aqua N15 and on Micromax Canvas Engage A091 scored 97/100 in the Acid3 test. This is in line with the <a class="external-link" href="http://d30ohmzj0cjdlk.cloudfront.net/en/Acid3">results released by Acid</a> for Opera Mini 7.5 and also by the <a class="external-link" href="http://www.browserscope.org/?category=acid3&v=top&ua=Opera%20Mini*&o=csv">Browserscope</a> project for profiling web browsers.</p>
<p>Awang, Yestel and Opal are brands from China or Hong Kong. The only pre-installed browser on Awang A808, an Android v2.3 (Gingerbread) phone, also cleared all tests but one. It scored 95/100 in the acid3 test, which is the case for the Firefox browser on most Gingerbread phones. The browsers on non-Android phones Yestel and Opal failed the tests for Acid1, Acid2, Acid3 and HTTP2, which indicates that while these phones are technically Internet-enabled, their users do not enjoy many of the benefits of the modern web.</p>
<h3>Screenshots or photos of results:</h3>
<p><a href="https://cis-india.org/a2k/blogs/photos-and-screenshots" class="internal-link">View photos and screenshots</a><br />The name of the file is in the format: <name of browser>_<name of format/ acid test with number>.<file extension><br />In the case of default browsers, <name of browser> appears as “android”.</p>
<h3>Limitations:</h3>
<p>Eight phones were under study. However, one of the phones (HiBro) did not contain a pre-installed browser. The only way to access the Internet on this phone was through pre-installed apps such as Facebook.</p>
<p>The operating system of Kechaoda K16, which was Java-based, did not yield to the script used for running the tests. It had one pre-installed WAP browser. Both these phones were excluded from the tests.<br /><br />Screenshots could not be obtained for the results of tests of two phones, Opal Cyher-Shot NX900 and Yestel Q5S+. We took photos of their screens instead.</p>
<ol> </ol>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/sub-100-phones-browser-compatibility-tests'>https://cis-india.org/a2k/blogs/sub-100-phones-browser-compatibility-tests</a>
</p>
No publisherrohiniIntellectual Property RightsAccess to KnowledgePervasive Technologies2017-02-16T16:47:02ZBlog EntryComments on Department of Industrial Policy and Promotion Discussion Paper on Standard Essential Patents and their Availability on Frand Terms
https://cis-india.org/a2k/blogs/comments-on-department-of-industrial-policy-and-promotion-discussion-paper-on-standard-essential-patents-and-their-availability-on-frand-terms
<b>The Centre for Internet & Society gave its comments to the Department of Industrial Policy and Promotion. The comments were prepared by Anubha Sinha, Nehaa Chaudhari and Rohini Lakshané.</b>
<p><strong><a href="https://cis-india.org/a2k/blogs/dipp-comments.pdf" class="external-link">Download the PDF </a></strong><strong>To access other submissions to the DIPP Discussion Paper on SEP and FRAND, please <a class="external-link" href="http://cis-india.org/a2k/blogs/responses-to-the-dipps-discussion-paper-on-seps-and-their-availability-on-frand-terms">click here</a></strong><strong><br /></strong></p>
<hr />
<p style="text-align: justify; "><strong>Authors <a name="_ftnref1"></a> </strong></p>
<div style="text-align: justify; "></div>
<p style="text-align: justify; "><strong>I. PRELIMINARY</strong></p>
<p style="text-align: justify; "><strong>1. </strong> This submission presents comments by the Centre for Internet and Society, India ("<strong>CIS</strong>") on the <i>Discussion Paper on Standard Essential Patents and their Availability on FRAND Terms</i> (dated 01 March, 2016), released by the Department of Industrial Policy and Promotion ("<strong>the</strong> <strong>DIPP</strong>"), Ministry of Commerce and Industry, Government of India (" <strong>the discussion paper/ discussion paper</strong>").</p>
<p style="text-align: justify; "><strong>2. </strong> CIS commends the DIPP for its efforts at seeking inputs from various stakeholders on this important and timely issue. CIS is thankful for the opportunity to put forth its views.</p>
<p style="text-align: justify; "><strong>3. </strong> This submission is divided into three main parts. The <i>first </i>part, 'Preliminary', introduces the document; the <i>second</i> part, 'About CIS', is an overview of the organization; and, the <i>third </i>part, 'Submissions on the Issues', answers the questions raised in the discussion paper. A list of annexures and their URLs is included at the end of the document.</p>
<p style="text-align: justify; "><strong>II. ABOUT CIS</strong></p>
<p style="text-align: justify; "><strong>4. </strong> CIS is a non-profit organisation <a name="_ftnref2"></a> that undertakes interdisciplinary research on internet and digital technologies from policy and academic perspectives. The areas of focus include digital accessibility for persons with diverse abilities, access to knowledge, intellectual property rights, openness (including open data, free and open source software, open standards, open access, open educational resources, and open video), internet governance, telecommunication reform, freedom of speech and expression, intermediary liability, digital privacy, and cyber-security.</p>
<p style="text-align: justify; "><strong>5. </strong> CIS values the fundamental principles of justice, equality, freedom and economic development. This submission is consistent with CIS' commitment to these values, the safeguarding of general public interest and the protection of India's national interest at the international level. Accordingly, the comments in this submission aim to further these principles. In addition, the comments are in line with the aims of the Make in India<a name="_ftnref3"></a> and Digital India <a name="_ftnref4"></a> initiatives of the Government of India.</p>
<p style="text-align: justify; "><strong>III. SUBMISSION ON THE ISSUES FOR RESOLUTION</strong></p>
<p style="text-align: justify; "><strong>6. </strong> The following sections provide CIS' views and recommendations on the issues enumerated in section 11 of the discussion paper:</p>
<p style="text-align: justify; "><strong> a) <i> Whether the existing provisions in the various IPR-related legislations, especially the Patents Act, 1970 and antitrust legislations, are adequate to address the issues related to SEPs and their availability on FRAND terms? If not, then can these issues </i> <i>be addressed through appropriate amendments to such IPR-related legislations? If so, what changes should be affected?</i> </strong></p>
<p style="text-align: justify; "><strong>A.1. </strong> The issues related to Standard Essential Patents ("<strong>SEPs</strong>") and their licensing on a fair, reasonable and non-discriminatory ("<strong>FRAND</strong>") basis lie at the intersection of intellectual property ("<strong>IP</strong>") law and competition law <a name="_ftnref5"></a>. As such, in India, the Patents Act, 1970 ("<strong>the Patents Act</strong>") and, the Competition Act, 2002 ("<strong>the Competition Act</strong>") are the relevant legislations to be studied. These have been recently discussed, most recently, by Justice Bakhru in his comprehensive order in<i>Telefonaktiebolaget LM Ericsson (Publ)</i> v. <i>Competition Commission of India and Another.</i> <a name="_ftnref6"></a></p>
<p style="text-align: justify; "><strong>A.2. </strong> It is our submission that at the moment, amendments to the Patents Act and the Competition Act may not be preferred. As Justice Bakhru has noted in the aforesaid decision,<a name="_ftnref7"></a> there is no conflict between the remedies in the Patents Act and in the Competition Act, and, the pursuit of rights and remedies under one of these legislations does not bar a party from pursuing rights and remedies in the other. Further, under both legislations, there are scenarios for the respective authorities - the Controller General of Patents, Designs and Trademarks ("<strong>the Controller</strong>") and the Competition Commission of India (" <strong>the CCI</strong>") for the Patents Act and for the Competition Act respectively - to seek inputs from each other.</p>
<p style="text-align: justify; "><strong>A.3. </strong> We also note that the CCI is a fairly nascent regulator; one whose jurisdiction is not yet a settled matter of law. While the judgment in the Ericsson-CCI case<a name="_ftnref8"></a> is indeed a good beginning, we do not believe that the matter has been conclusively decided. Accordingly, given the complex legal questions involved, over not just the interpretation of the Patents Act and the Competition Act, but also constitutional issues around the jurisdiction of regulators and the power of judicial review of the courts,<a name="_ftnref9"></a> we believe that it would be prudent to examine the ruling of the courts on these issues in some detail, before considering amendments.</p>
<p style="text-align: justify; "><strong>A.4. </strong> In addition, we are of the opinion that our IP law, and, our competition law, fully honor our international commitments, including the requirements under the TRIPS Agreement.<a name="_ftnref10"></a> As such, we would urge the Government of India to not enter into free trade agreements including, <i>inter alia,</i> the Regional Comprehensive Economic Partnership,<a name="_ftnref11"></a> that threaten our use of TRIPS flexibilities, and, impose 'TRIPS-plus' obligations.</p>
<p style="text-align: justify; "><strong>A.5. </strong> We also urge the Government of India to adopt a balanced National IPR Policy, and, a National Competition Policy, both of which has been in abeyance for a considerable amount of time. We believe that these policies are crucial to realize the objectives of the Make in India and Digital India initiatives. At the same time, we submit that these policies be balanced, taking into account the interests of all stakeholders, developed through an extensive consultative process, and, suitably modified based on feedback.</p>
<p style="text-align: justify; "><strong> <i> b) What should be the IPR policy of Indian Standard Setting Organizations in developing Standards for Telecommunication sector and other sectors in India where Standard Essential Patents are used? </i> </strong></p>
<p style="text-align: justify; "><strong>B.1.</strong> The discussion paper identifies four Standard Setting Organizations ("<strong>SSOs</strong>") in India, namely, the Telecom Standards Development Society of India ("<strong>TSDSI</strong>"), the Telecommunication Engineering Center ("<strong>TEC</strong>"), the Bureau of Indian Standards (" <strong>BIS</strong>"), the Global ICT Standardization Forum for India ("<strong>GISFI</strong>"), and, the Development Organization of Standards for Telecommunications in India ("<strong>DOSTI</strong>"). Comments on each of their policies have been made in the following paragraphs.</p>
<p style="text-align: justify; "><strong>B.2.</strong> The BIS does not have an intellectual property rights ("<strong>IPR</strong>") policy of its own. The BIS Act, 2016 <a name="_ftnref12"></a> does not include one either. As the discussion paper notes, the BIS refers to the IPR policies of the relevant international SSO in the context of technology implemented in India, that is the same or equivalent to the ones developed or maintained by the respective SSOs.We recommend that BIS adopt an IPR policy at the earliest, factoring in India specific requirements differences: a large and exponentially growing mobile device market makes it possible for manufacturers, patent owners and implementers alike to achieve financial gains even with a low margin ("<strong>India specific requirements</strong>"). In addition, our comments on the IPR policy of the TSDSI in paragraph <strong>B.4.</strong> of this submission (below), may also be considered for the content of the BIS' future policy on IPR.</p>
<p style="text-align: justify; "><strong>B.3</strong> . According to the discussion paper, the TEC considers the IPR policies of the International Telecommunication Union. We recommend that like the BIS, the TEC also adopt its own IPR policy, factoring in the India specific requirements detailed above. In addition, our comments on the IPR policy of the TSDSI in paragraph <strong>B.4.</strong> of this submission (below), may also be considered for the content of the BIS' future policy on IPR.</p>
<p style="text-align: justify; "><strong>B.4. </strong> The TSDSI, a relatively new standards body, has defined an IPR policy <a name="_ftnref13"></a>. In respect of this policy, the following observations are presented. <i>First, </i>this policy notes that IPR owners should be adequately and fairly rewarded.<i>Second, </i>it requires members to disclose essential IPRs in a "timely fashion." <a name="_ftnref14"></a> <i>Third, </i>as per its policy, the TSDSI can request the owner of an essential IPR to undertake, within three months, to license it irrevocably on FRAND terms. <a name="_ftnref15"></a> At the same time, the policy also states that the (aforesaid) ask may be subject to the condition that licensees agree to reciprocate. <a name="_ftnref16"></a> Should such an undertaking not be forthcoming, the TSDSI may suspend work on the standard or technical specification in question, or, adopt another course of action. <a name="_ftnref17"></a> <i>Fourth, </i>the policy identifies two scenarios for the non availability of licences prior to publication, <a name="_ftnref18"></a> based on the existence, or, the lack thereof, of alternative technologies. In the event of a lack of alternative technology, the policy requires a member to disclose in writing its reasons for not licensing its patents. Following this, it is submitted that there is no clarity on the concrete steps that the TSDSI would adopt in case the efforts to convince a member to license their essential IPRs, fail. The policy only states that "the TSDSI shall take further action as deemed fit."<a name="_ftnref19"></a> The same is also true where the IPR owner is not a member of the TSDSI. <a name="_ftnref20"></a> <i>Fifth, </i>the policy also envisages a scenario of non-availability post publication. <a name="_ftnref21"></a> The procedure for dealing with this is akin to the one detailed above, with the TSDSI asking for a written explanation, considering further action, including the possible withdrawal of the standard or technical specification in question. <i>Sixth, </i>it is observed that the policy does not require a commitment from its members to refrain from seeking injunctive relief. <i>Seventh, </i>it is accordingly recommended that the policy be suitably modified (a) to include India specific requirements discussed above; (b) to require a commitment from its members, that they refrain from seeking injunctive relief; (c) to delete the condition where FRAND negotiations may be subject to a condition of reciprocity; (d) to identify in detail the procedure to be followed in case of patent 'hold-ups' and patent 'hold-outs'; (e) to identify in detail the procedure to be followed in case of refusal to license by TSDSI members, and, non-members, both; and, (f) to include a detailed process on the declassification of a standard or technical specification.</p>
<p style="text-align: justify; "><strong>B.5. </strong> The IPR policy of GISFI<a name="_ftnref22"></a>, is substantially similar to the IPR policy of the TSDSI, discussed in paragraph <strong>B.4.</strong> of this submission (above). <i>Inter alia, </i> GISFI's IPR policy also does not indicate the specific steps to be taken in case an IPR owner refuses to license essential IPRs for which no alternative technology is available. This is true in the cases both, where the refusal is by a member, and, by a non-member. <a name="_ftnref23"></a>Our recommendations on the IPR policy of the TSDSI in paragraph <strong>B.4.</strong> of this submission (above), may also be considered for the GISFI's IPR policy.</p>
<p style="text-align: justify; "><strong>B.6. </strong> According to the discussion paper, the IPR policy of the DOSTI resembles that of the GIFSI. It is submitted that these policies are similar in the context of refusal to license by a member or non-member, and, like the TSDSI and the GISFI, the DOSTI also requires the patent holder to license its IPR irrevocably on FRAND terms. Accordingly, we reiterate our comments on the IPR policy of the TSDSI in paragraph <strong>B.4.</strong> of this submission (above). The aforesaid recommendations may also be considered to be relevant for the DOSTI's IPR policy.</p>
<p style="text-align: justify; "><strong>B.7.</strong> We are also of the opinion that it would be useful for Indian SSOs to consider recommending the use of royalty-free licenses for IPRs. Illustratively, the World Wide Web Consortium ("<strong>W3C</strong>") <a name="_ftnref24"></a> and the Open Mobile Alliance ("<strong>OMA</strong>") <a name="_ftnref25"></a> encourage royalty-free licensing.</p>
<p style="text-align: justify; "><strong> <i> c) Whether there is a need for prescribing guidelines on working and operation of Standard Setting Organizations by Government of India? If so, what all areas of working of SSOs should they cover? </i> </strong></p>
<p style="text-align: justify; "><strong>C.1. </strong> In our opinion, in a milieu where instances of SEP litigation are becoming increasingly complex, and, there is a tangible threat of the abuse of the FRAND process, it might be useful for the Government of India to make suggestions on the working of Indian SSOs.</p>
<p style="text-align: justify; "><strong>C.2. </strong> It is suggested that the Government of India develop Model Guidelines that may be adopted by Indian SSOs, taking into account India specific requirements, including the ones detailed in paragraph <strong>B.2.</strong> of this submission (above). We believe that this measure will also enable the fulfilment of the objectives of the Make in India and Digital India initiatives.</p>
<p style="text-align: justify; "><strong>C.3. </strong> We recommend that various stakeholders, including IP holders, potential licensees and users of IP, civil society organizations, academics, and, government bodies, including the the Indian Patent Office ("<strong>IPO</strong>"), the Department of Telecommunications, the DIPP, TRAI, and, the CCI be consulted in the creation of these Model Guidelines.</p>
<p style="text-align: justify; "><strong>C.4.</strong> In our opinion, the Model Guidelines may cover (a) the composition of the SSO; (b) the process of admitting members; (c) the process of the determination of a standard or technical specification; (d) the process of declassification of a standard or technical specification; (e) the IPR Policy; (f) resolution of disputes; (g) applicable law.</p>
<p style="text-align: justify; "><strong> <i> d) Whether there is a need for prescribing guidelines on setting or fixing the royalties in respect of Standard Essential Patents and defining FRAND terms by Government of India? If not, which would be appropriate authority to issue the guidelines and what could be the possible FRAND terms? </i> </strong></p>
<p style="text-align: justify; "><strong>D.1. </strong> In light of the inadequacies in the IPR policies (discussed above) of various SSOs in India, as well the the spate of ongoing patent infringement lawsuits around mobile technologies, we recommend that the Government of India intervene in the setting of royalties and FRAND terms.</p>
<p style="text-align: justify; "><strong>D.2. </strong> We propose that the Government of India initiate the formation of a patent pool of critical mobile technologies and apply a compulsory license with a five per cent royalty<a name="_ftnref26"></a>. Further details of this proposal have been enumerated in answer to question 'f' of the discussion paper (below).</p>
<p style="text-align: justify; "><strong>D.3.</strong> Our motivations for this proposal are many-fold.<i> </i>In our opinion, it is near-impossible for potential licensees to avoid inadvertent patent infringement. As a part of our ongoing research on technical standards applicable to mobile phones sold in India, we have found nearly 300 standards so far <a name="_ftnref27"></a>. It is submitted that carrying out patent searches for all the standards would be extremely expensive for potential licensees. Further, even if such searches were to be carried out, different patent owners, SSOs and potential licensees disagree on valuation, essentiality, enforceability, validity, and coverage of patents. In addition, some patent owners are non-practising entities ("<strong>NPEs</strong>") and may not be members of SSOs. The patents held by them are not likely to be disclosed. More importantly, home-grown manufacturers that have no patents to leverage and may be new entrants in the market would be especially disadvantaged by such a scenario. Budget phone manufacturers, standing to incur losses either as a result of heavy licensing fees, or, potential litigation, may close down. Alternatively, they may pass on their losses to consumers, driving the now-affordable phones out of their financial reach. With the objectives of Make in India and Digital India in sight, it is essential that Indian consumers continue to have access to devices within their purchasing power.</p>
<p style="text-align: justify; "><strong> <i> e) On what basis should the royalty rates in SEPs be decided? Should it be based on Smallest Saleable Patent Practicing Component (SSPPC), or on the net price of the Downstream Product, or some other criterion? </i> </strong></p>
<p style="text-align: justify; "><strong>E.1. </strong> It is our submission that royalty rates for SEPs should be based on the smallest saleable patent practising component ("<strong>SSPPC</strong>"). Most modern telecommunication and IT devices are complex with numerous technologies working in tandem. Different studies indicate that the number of patents in the US applicable to smartphones is between 200,000 and 250,000. <a name="_ftnref28"></a> A comprehensive patent landscape of mobile device technologies conducted by CIS reveals that nearly 4,000 patents are applicable to mobile phones sold in India. <a name="_ftnref29"></a> It is thus extremely difficult to quantify the exact extent of interaction and interdependence between technologies in any device, in such a way that the exact contribution of the patented technology to the entire device can be determined.</p>
<p style="text-align: justify; "><strong>E.2. </strong> The net cost of the device is almost always several times that of the chipset that implements the patented technology. Armstrong et al <a name="_ftnref30"></a> have found that the cost of a 4G baseband chip costs up to $20 including royalties in a hypothetical $400 phone sold in the US. One of the litigating parties in the ongoing patent infringement lawsuits in India has stated that one of the reasons for preferring to leverage its patents as downstream as possible in the value chain is that it will earn the company more royalties <a name="_ftnref31"></a>. In instances where patent exhaustion occurs much earlier in the value chain, such as in the case of the company's cross-licenses with Qualcomm (another company that owns patents to chip technologies), the company does not try to obtain royalties from the selling prices of devices for the cross-licensed technologies. It is submitted that such market practices could be detrimental to the government's objectives such as providing a mobile handset to every Indian by 2020 as a part of the Digital India programme <a name="_ftnref32"></a>. It is also worth noting in this context that the mobile device is the first and only medium of access to the Internet and telecom services for a large number of Indians, and, consequently, the only gateway to access to knowledge, information and critical services, including banking. <a name="_ftnref33"></a></p>
<p style="text-align: justify; "><strong>E.3. </strong> The discussion paper notes that J. Gregory Sidak, having studied the proceedings before the Delhi High Court, approved of the manner in which the court determined royalties.<a name="_ftnref34"></a> In his paper, Sidak(2015)<a name="_ftnref35"></a> notes that in determining royalties, the court relied, <i>inter alia, </i>on the decision of <i>CSIRO</i> v.<i>Cisco</i> ("<strong>the CSIRO case</strong>"), a 2015 decision of the US Court of Appeals for the Federal Circuit. 2015. <a name="_ftnref36"></a> We humbly disagree with the opinion of the Delhi High Court on the manner of determining royalties, and, with Sidak's approval of the same.</p>
<p style="text-align: justify; "><strong>E.4.</strong> It is our submission that the CSIRO case <a name="_ftnref37"></a> relied on a previous judgment, which we disagree with. The decision, a 2014 district court judgment, analogises the determination of royalties on SEPs to the determination of royalties on a copyrighted book. The court notes, "[b]asing a royalty solely on chip price is like valuing a copyrighted book based only on the costs of the binding, paper, and ink needed to actually produce the physical product. While such a calculation captures the cost of the physical product, it provides no indication of its actual value." In our opinion, this analogy is flawed. While a book is a distinct product as a whole, a mobile phone is a sum-total of its parts. If at all, a mobile phone could be compared with a book with several authors, as multiple technologies belonging to several patent holders are implemented in it. This judgement bases valuation for one set of technologies on the whole device, thus awarding compensation to the licensor even for those technologies implemented in the device that are not related to the licensed technologies. In our opinion, charging royalty on the net selling price of a device for one technology or one set of technologies is thus more like a referral scheme and less like actual compensation for the value added. Accordingly, royalties must be charged on the SSPPC principle.</p>
<p style="text-align: justify; "><strong> <i> f) Whether total payment of royalty in case of various SEPs used in one product should be capped? If so, then should this limit be fixed by Government of India or some other statutory body or left to be decided among the parties? </i> </strong></p>
<p style="text-align: justify; "><strong>F.1. </strong> CIS has proposed a compulsory licensing fee of five per cent on a patent pool of critical mobile technologies. The rationale for this figure is the royalty cap imposed by India in the early 1990s.</p>
<p style="text-align: justify; "><strong>F.2.</strong> As part of regulating foreign technology agreements, the (former) Department of Industrial Development (later merged with the DIPP) capped royalty rates in the early 1990s. Payment of royalties was capped at either a lump sum payment of $2 million, or, 5 percent on the royalty rates charged for domestic sale, and, 8 percent for export of goods pertaining to "high priority industries". <a name="_ftnref38"></a> Royalties higher than 5 percent or 8 percent, as the case may be, required securing approval from the government.</p>
<p style="text-align: justify; "><strong>F.3.</strong> While the early 1990s (specifically, 1991) was too early for the mobile device manufacturing industry to be listed among high priority industries, the public announcement by the government covered computer software, consumer electronics, and electrical and electronic appliances for home use. The cap on royalty rates was lifted by the DIPP in 2009. <a name="_ftnref39"></a></p>
<p style="text-align: justify; "><strong>F.4.</strong> It is submitted in the case of mobile device technology, we are witnessing a situation similar to that of the 1990s. In this sphere, most of the patent holders are multinational corporations which results in large royalty amounts leaving India. At the same time, in our opinion, litigation over patent infringement in India has limited the manufacture and sale of mobile devices of homegrown brands.</p>
<p style="text-align: justify; "><strong>F.5.</strong> We believe that the aforementioned developments are detrimental to the Make in India and Digital India initiatives of the Government of India, and, the government's aim of encouraging local manufacturing, facilitating indigenous innovation, as well as strengthening India's intellectual property regime. It is our submission, therefore, that the payment of royalties on SEPs be capped.</p>
<p style="text-align: justify; "><strong>F.6.</strong> We submit that such a measure is particularly important, given the nature of SEP litigation in India. While SEP litigation in India is indeed comparable to international SEP litigation on broader issues raised, specifically competition law concerns, but differs crucially where the parties are concerned. International SEP litigation is largely between multinational corporations with substantial patent portfolios, capable of engaging in long drawn out litigations, or engaging in other strategies including setting off against each other's patent portfolios. Dynamics in the Indian market differ - with a larger SEP holder litigating against smaller manufacturers, many of whom are indigenous, home-grown. <a name="_ftnref40"></a></p>
<p style="text-align: justify; "><strong>F.7.</strong> In June, 2013, we had recommended to the erstwhile Hon'ble Minister for Human Resource Development <a name="_ftnref41"></a> that a patent pool of essential technologies be established, with the compulsory licensing mechanism. Subsequently, in February, 2015, we reiterated this request to the Hon'ble Prime Minister.<a name="_ftnref42"></a> We propose that the Government of India initiate the formation of a patent pool of critical mobile technologies and mandate a five percent compulsory license. <a name="_ftnref43"></a> As we have stated in our request to the Hon'ble Prime Minister, we believe that such a pool would "possibly avert patent disputes by ensuring that the owners' rights are not infringed on, that budget manufacturers are not put out of business owing to patent feuds, and that consumers continue to get access to inexpensive mobile devices. Several countries including the United States issue compulsory licenses on patents in the pharmaceutical, medical, defence, software, and engineering domains for reasons of public policy, or to thwart or correct anti-competitive practices." <a name="_ftnref44"></a></p>
<p style="text-align: justify; "><strong>F.8.</strong> We believe that such a measure is not in breach of our international obligations under the TRIPS Agreement.</p>
<p style="text-align: justify; "><strong><i>g) Whether the practice of Non-Disclosure Agreements (NDA) leads to misuse of dominant position and is against the FRAND terms?</i></strong></p>
<p style="text-align: justify; "><strong>G.1.</strong> The issue of Non Disclosure Agreements ("<strong>NDAs</strong>") in SEP/FRAND litigation is a contentious one. Patent holders argue that they are essential to the license negotiation process to protect confidential information, whereas potential licensees submit that NDAs result in the imposition of onerous conditions.<a name="_ftnref45"></a></p>
<p style="text-align: justify; "><strong>G.2.</strong> In India's SEP litigation, the use of NDAs has been raised as an issue in at least two cases - separately by Intex<a name="_ftnref46"></a> and by iBall <a name="_ftnref47"></a>, in their cases against Ericsson. Intex and iBall have both claimed that the NDAs that Ericsson asked them to sign were onerous, and favoured Ericsson.</p>
<p style="text-align: justify; "><strong>G.3.</strong> According to Intex, the NDA in question would result in high legal costs for Intex, and, would render it unable to disclose crucial information to its vendors (who had agreed to supply to Intex on the condition that Intex was not infringing on any patents). <a name="_ftnref48"></a></p>
<p style="text-align: justify; "><strong>G.4.</strong> According to iBall, the parties had agreed to enter a global patent license agreement ("<strong>GPLA</strong>") but Ericsson insisted on an NDA. Upon receiving the terms of the NDA, iBall claimed before the CCI that Ericsson's refusal to identify the allegedly infringed SEPs; the threat of patent infringement proceedings; the attempt to coax iBall to enter into a "one-sided and onerous NDA"; the tying and bundling patents irrelevant to iBall's products by way of a GPLA; demanding unreasonably high royalties by way of a certain percentage value of handset as opposed to the cost of actual patented technology used all constituted abuse of Ericsson's dominant position under Section 4 of the Competition Act. <a name="_ftnref49"></a></p>
<p style="text-align: justify; "><strong>G.5.</strong> In India, the law on misuse (abuse) of dominant position by an 'enterprise' is found primarily in Section 4 of the Competition Act (read with Section 2(h) of the Competition Act, which defines 'enterprise'). In its recent decision in the Ericsson-CCI case <a name="_ftnref50"></a>, the Delhi High Court has found Ericsson to be an 'enterprise' for the purposes of the Competition Act, and hence subject to an inquiry under Section 4 of the same legislation. In the same decision, the court has also recognised the jurisdiction of the CCI to examine Ericsson's conduct for abuse of behaviour, based on complaints by Micromax and Intex. The use of NDAs is one of the grounds on which the parties have complained to the CCI.</p>
<p style="text-align: justify; "><strong>G.6.</strong> Pending a final determination by the CCI (and subsequent appeals), it would be premature to make an absolute claim on whether the use of NDAs results in an abuse of dominant position in <i>all</i> instances. However, the following submissions are made: <i>First, </i>the determination of misuse/abuse of dominant position is influenced by a number of factors <a name="_ftnref51"></a>, i.e., such a determination should be made on a case to case basis. <i>Second, </i>the market regulator, the CCI, is best situated to determine (a) abuse of dominance, and (b) whether the use of NDAs by an enterprise constitutes an abuse of its dominance. <i>Third, </i>the question of whether the use of NDAs constitutes misuse of dominance needs to be addressed in two parts - (a) whether the use of the NDA <i>itself </i>is abusive, irrespective of its terms and, (b) whether the use of certain specific terms renders the NDA abusive. <i>Fourth, </i>NDAs could potentially lead to the patent owner abusing its dominant position in the market, as well as result in an invalidation of FRAND commitments and terms. NDAs make it impossible to determine if a patent holder is engaging in discriminatory licensing practices. <i>Fifth, </i>NDAs are especially harmful in the case of NPEs-- companies that hold patents and monetise them but don't build or manufacture the components or devices that implement the technology associated with the patents.</p>
<p style="text-align: justify; "><strong> <i> h) What should be the appropriate mode and remedy for settlement of disputes in matters related to SEPs, especially while deciding FRAND terms? Whether Injunctions are a suitable remedy in cases pertaining to SEPs and their availability on FRAND terms? </i> </strong></p>
<p style="text-align: justify; "><strong>H.1.</strong> The licensing of SEPs on FRAND terms requires the parties to negotiate "reasonable" royalty rates in good faith, and apply the terms uniformly to all willing licensees. It is our submission that if the parties cannot agree to FRAND terms, they may enter into binding arbitration. Further, if all efforts fail, there exist remedies under the Patents Act and the Competition Act, 2002 to address the issues.</p>
<p style="text-align: justify; "><strong>H.2.</strong> Section 115 of the Patents Act empowers the court to appoint an independent scientific adviser " <i> to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose. </i> "<a name="_ftnref52"></a> Such an independent adviser may inform the court on the technical nuances of the matter.</p>
<p style="text-align: justify; "><strong>H.3. </strong> Further<strong>, </strong>under the Patents Act, pending the decision of infringement proceedings the Court may provide interim relief, if the plaintiff proves <i>first, </i>a prima facie case of infringement; <i>second, </i>that the balance of convenience tilts in plaintiff's favour; and, <i>third, </i>that if an injunction is not granted the plaintiff shall suffer irreparable damage. <strong>H.4. </strong>However, it is our suggestion that courts adopt a more cautious stance towards granting injunctions in the field of SEP litigation. <i>First, </i>in our opinion, injunctions may prove to be a deterrent to arrive at a FRAND commitment, in particular, egregiously harming the willing licensee. <i>Second, </i>especially in the Indian scenario, where litigating parties operate in vastly different price segments (thereby targeting consumers with different purchasing power), it is difficult to establish that "irreparable damage" has been caused to the patent owner on account of infringement. <i>Third, </i>we note the approach of the European Court of Justice, which prohibited the patent holder from enforcing an injunction provided a willing licensee makes an offer for the price it wishes to pay to use a patent under the condition that it deposited an amount in the bank as a security for the patent holder. <a name="_ftnref53"></a> <i>Fourth, </i>we also note the approach of the Federal Trade Commission in the USA, which only authorizes patent holders to seek injunctive relief against potential licensees who have either stated that they will not license a patent on any terms, or refuse to enter into a license agreement on terms that have been set in the final ruling of a court or arbitrator. <a name="_ftnref54"></a> Further, as Contreras (2015)<a name="_ftnref55"></a> observes, that the precise boundaries of what constitutes as an unwilling licensee remains to be seen. We observe a similar ambiguity in Indian jurisprudence, and accordingly submit that courts should carefully examine the conduct of the licensee to injunct them from the alleged infringement.</p>
<p style="text-align: justify; "><strong><i>i) What steps can be taken to make the practice of Cross-Licensing transparent so that royalty rates are fair & reasonable?</i></strong></p>
<p style="text-align: justify; "><strong>I.1.</strong> The Patents Act requires patentees and licensees to submit a statement on commercial working of the invention to the Controller every year. <a name="_ftnref56"></a> Form 27 under section 146(2) of the Act lists the details necessary to be disclosed for compliance of the requirement of "working". A jurisprudential analysis reveals the rationale and objective behind this mandatory requirement. Undeniably, the scheme of the Indian patent regime makes it amply clear that "working" is a very important requirement, and the public as well as competitors have a right to access this information in a timely manner, without undue hurdles. <a name="_ftnref57"></a> Indeed, as the decision in <i>Natco Pharma</i> v. <i>Bayer Corporation</i> <a name="_ftnref58"></a> reveals, the disclosures in Form 27 were crucial to determining the imposition of a compulsory license on the patentee. Thus, broadly, Form 27 disclosures can critically enable willing licensees to access patent "working" information in a timely manner.</p>
<p style="text-align: justify; "><strong>I.2.</strong> However, there has been little compliance of this requirement by the patentees, despite the IPO reiterating the importance of compliance through the issuance of multiple public notices <a name="_ftnref59"></a> (suo motu and in response to a public interest litigation filed in 2011 <a name="_ftnref60"></a>), and, reminding the patentees that non-compliance is punishable with a heavy fine. <a name="_ftnref61"></a> Findings of research submitted by one of the parties<a name="_ftnref62"></a> in the writ of the<a></a><a></a><a>2011</a><a name="_msoanchor_1"></a><a name="_msoanchor_2"></a><a name="_msoanchor_3"></a> public interest litigation<i>Shamnad Basheer </i>v. <i>Union of India and others</i><a name="_ftnref63"></a> reveal as follows. <i>First, </i>a large number of Form 27s are unavailable for download from the website of the IPO. This possibly indicates that the forms have either not been filed by the patentees with the IPO, or have not been uploaded (yet) by the IPO. <i>Second, </i>a large number of filings in the telecom sector remain incomplete.</p>
<p style="text-align: justify; "><strong>I.3. </strong> In 2015, CIS queried the IPO website for Form 27s of nearly 4,400 patents. CIS' preliminary research (ongoing and unpublished) echoes findings <a name="_ftnref64"></a> similar to the ones disclosed in the case discussed in paragraph <strong>I.2.</strong> of this submission (above).</p>
<p style="text-align: justify; "><strong>I.4.</strong> In view of the submissions above, CIS makes the following recommendations to make the practice of cross-licensing transparent so that royalty rates are fair & reasonable: <i>first, </i>that there be a strict enforcement of the submission of Form 27s on a regular and timely basis by the patentees; and, <i>second, </i>that guidelines may be drawn up on whether it was discriminatory to charge no royalties (whether on the SSPPU or on the whole device) for a patent holder in a cross-licensing arrangement with another, when it charges royalty on the selling price of the device from a non-cross-licensor.</p>
<p style="text-align: justify; "><strong><i>j) What steps can be taken to make the practice of Patent Pooling transparent so that royalty rates are fair & reasonable?</i></strong></p>
<p style="text-align: justify; "><strong>J.1.</strong> Patent pools can be understood as an agreement between two or more patent owners to license one or more of their patents to one another or to third parties.<a name="_ftnref65"></a> Thus, the creation of a patent pool makes use of the legal instrument of licensing, similar to the practice of cross-licensing. Insofar, we reiterate our recommendations made in paragraph <strong>I.3. </strong>of this submission (above), which apply to the answer to the instant question.</p>
<p style="text-align: justify; "><strong>J.2.</strong> In furtherance of the recommendation above, we also propose the alteration of the Form 27 template <a name="_ftnref66"></a> to include more disclosures. Presently, patentees are required to to declare number of licensees and sub-licensees. We specifically propose that the format of Form 27 filings be modified to include patent pool licenses, with an explicit declaration of the names of the licensees and not just the number.</p>
<p style="text-align: justify; "><strong>J.3. </strong> It is also our submission that patent pools be required to offer FRAND licenses on the same terms to both members and non-members of the pool.</p>
<p style="text-align: justify; "><strong> <i> k) How should it be determined whether a patent declared as SEP is actually an Essential Patent, particularly when bouquets of patents are used in one device? </i> </strong></p>
<p style="text-align: justify; "><strong>K.1.</strong> We submit that several studies on the essentiality of SEPs indicate that only a small percentage of SEPs are actually essential. A study conducted by<i>Goodman </i>and <i>Myers </i>(2004) showed that only 21% of SEPs pertaining to the 3G standard in the US were deemed to be actually essential. <a name="_ftnref67"></a> Another study conducted by the same authors in 2009 for WCDMA patents showed that 28% SEPs were essential. <a name="_ftnref68"></a></p>
<p style="text-align: justify; "><strong>K.2.</strong> In our opinion, <i>first, </i>the methodology adopted by <i>Goodman </i>and <i>Myers</i> <a name="_ftnref69"></a><i> </i>could be replicated to determine the "essential" nature of an SEP. <i>Second, </i>while adopting their methodology, it would be useful to address some of the issues over which these studies were critiqued. <a name="_ftnref70"></a> Accordingly, we suggest that (a) laboratory tests may be conducted by an outside expert or by a commercial testing laboratory, and not at an in-house facility owned by either parties, so as to eliminate in the lab results; and, (b) expert opinions may be considered in order to determine essentiality.</p>
<p style="text-align: justify; "><strong> <i> l) Whether there is a need of setting up of an independent expert body to determine FRAND terms for SEPs and devising methodology for such purpose? </i> </strong></p>
<p style="text-align: justify; "><strong>L.1.</strong> In our opinion, there is no need for an independent expert body to determine FRAND terms for SEPs and devising the methodology for such a purpose. The existing legal and regulatory framework is reasonably equipped to determine FRAND terms. A more detailed submission on the existing framework and suggested changes has been made in our answer to question 'a' of the discussion paper (above).</p>
<p style="text-align: justify; "><strong>L.2.</strong> However, we observe that Indian courts, tribunals and the CCI are yet to endorse a methodology for making FRAND determinations. The judgments of the Delhi High Court do not provide a conclusive rationale or methodology for the imposition of royalty rates in the respective matters. <a name="_ftnref71"></a> <strong> </strong></p>
<p style="text-align: justify; "><strong>L.3. </strong> We submit that<strong> </strong>in the absence of definitive Indian jurisprudence for determination of FRAND terms, American jurisprudence provides certain guidance. Contreras<a name="_ftnref72"></a> (2015) informs us about the various case law American courts and regulators have developed and adhered to whilst making such determinations.The dominant analytical framework for determining "reasonable royalty" patent damages in the United States today was set out in 1970 by the District Court for the Southern District of New York in <i>Georgia-Pacific Corp. </i>v. <i> U.S. Plywood Corp <a name="_ftnref73"></a> </i> . While this may be used as a guiding framework, the question of methodology remains far from settled.</p>
<p style="text-align: justify; "><strong> <i> m) If certain Standards can be met without infringing any particular SEP, for instance by use of some alternative technology or because the patent is no longer in force, what should be the process to declassify such a SEP? </i> </strong></p>
<p style="text-align: justify; "><strong>M.1. </strong> In our opinion, if a standard can be met without infringing a patent declared to be "essential" to it, then the patent is not actually "essential". In this instance, the methods suggested in response to question 'k' of the discussion paper (above) could be used to declassify the SEP.</p>
<p style="text-align: justify; "><strong>M.2. </strong> We further submit that if a patent is no longer in force, that is, if it has expired, then it ceases to be patent, and therefore an SEP. The process to declassify such an SEP could be simply to declare it an expired patent.</p>
<p style="text-align: justify; "><strong>M.3. </strong> In addition, if it is possible to implement a certain standard by using an alternative technology, then the SEP for such a standard is not actually an SEP. However, the scale of operations and that of mass manufacturing and compatibility requirements in devices and infrastructure mean that it is unlikely to have different methods of implementing the same standard.</p>
<p style="text-align: justify; "><strong>M.4.</strong> In general, it is our submission that an Indian SSO could maintain a publicly accessible database of SEPs found to be invalid or non-essential in India.</p>
<p style="text-align: justify; "><strong>7. </strong> We reiterate our gratitude to the DIPP for the opportunity to make these submissions. In addition to our comments above, we have shared some of our research on this issue, in the 'Annexures', below.</p>
<p style="text-align: justify; "><strong>8. </strong> It would be our pleasure and privilege to discuss these comments with the DIPP; and, supplement these with further submissions if necessary. We also offer our assistance on other matters aimed at developing a suitable policy framework for SEPs and FRAND in India, and, working towards the sustained innovation, manufacture and availability of mobile technologies in India.</p>
<p style="text-align: justify; "><strong>On behalf of the Centre for Internet and Society, 22 April, 2016</strong></p>
<p style="text-align: justify; ">Anubha Sinha - <a>anubha@cis-india.org</a> | Nehaa Chaudhari - <a>nehaa@cis-india.org</a></p>
<p style="text-align: justify; ">Rohini Lakshané - <a>rohini@cis-india.org</a></p>
<p style="text-align: justify; "><strong>___________________________________________________________________________</strong></p>
<p style="text-align: justify; ">___________________________________________________________________________</p>
<p style="text-align: justify; "><strong>ANNEXURES</strong></p>
<p style="text-align: justify; "><strong>___________________________________________________________________________</strong></p>
<p style="text-align: justify; ">● Anubha Sinha, Fuelling the Affordable Smartphone Revolution in India, available at <a href="http://cis-india.org/a2k/blogs/digital-asia-hub-the-good-life-in-asias-21-st-century-anubha-sinha-fueling-the-affordable-smartphone-revolution-in-india"> http://cis-india.org/a2k/blogs/digital-asia-hub-the-good-life-in-asias-21-st-century-anubha-sinha-fueling-the-affordable-smartphone-revolution-in-india </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Nehaa Chaudhari, Standard Essential Patents on Low-Cost Mobile Phones in India: A Case to Strengthen Competition Regulation?, available at <a href="http://www.manupatra.co.in/newsline/articles/Upload/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf"> http://www.manupatra.co.in/newsline/articles/Upload/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Nehaa Chaudhari, Pervasive Technologies:Patent Pools, available at <a href="http://cis-india.org/a2k/blogs/patent-pools">http://cis-india.org/a2k/blogs/patent-pools</a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Nehaa Chaudhari, The Curious Case of the CCI:Competition Law and SEP Regulation in India, presented at the 4th Global Congress on Intellectual Property and the Public Interest, <span>available </span>at <a href="http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-india"> http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-indi </a> <a href="http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-india">a</a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Nehaa Chaudhari, Letter for Establishment of Patent Pool for Low Cost Access Devices through Compulsory Licences, available at <a href="http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices"> http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Prof Jorge L. Contreras and Rohini Lakshané, Patents and Mobile Devices in India: An Empirical Survey, available at <a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486">http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486</a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, CIS, List of technical standards and IP types (Working document), available at <a href="https://drive.google.com/file/d/0B8SgjShAjhbtaml5eW50bS01d2s/view?usp=sharing"> https://drive.google.com/file/d/0B8SgjShAjhbtaml5eW50bS01d2s/view?usp=sharing </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, Open Letter to Prime Minister Modi, February 2015, available at <a href="http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi">http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi</a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, FAQ: CIS' proposal to form a patent pool of critical mobile technology, September 2015, available at <a href="http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies"> http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, Joining the dots in India's big-ticket mobile phone patent litigation, May 2015, last updated October 2015, available at <a href="http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation"> http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, Compilation of Mobile Phone Patent Litigation Cases in India, March 2015, last updated April 2016, available at <a href="http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india"> http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india </a> , (last accessed April 22, 2016).</p>
<p style="text-align: justify; ">● Rohini Lakshané, Patent landscaping in the Indian Mobile Device Marketplace, presented at the 4th Global Congress on Intellectual Property and Public Interest, December 2015, available at <a href="https://drive.google.com/open?id=0B8SgjShAjhbtME45N245SmowOGs">https://drive.google.com/open?id=0B8SgjShAjhbtME45N245SmowOGs</a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">● Vikrant Narayan Vasudeva, Patent Valuation and Licence Fee Determination in the Context of Patent Pools, available at <a href="http://cis-india.org/a2k/blogs/patent-valuation-and-license-fee-determination-in-context-of-patent-pools"> http://cis-india.org/a2k/blogs/patent-valuation-and-license-fee-determination-in-context-of-patent-pools </a> (last accessed 22 April, 2016).</p>
<p style="text-align: justify; ">************</p>
<div style="text-align: justify; "><br clear="all" />
<hr size="1" width="33%" align="left" />
<div id="ftn1">
<p><a name="_ftn1"></a> This submission has been authored by (alphabetically) Anubha Sinha, Nehaa Chaudhari and Rohini Lakshané, on behalf of the Centre for Internet and Society, India.</p>
</div>
<div id="ftn2">
<p><a name="_ftn2"></a> See The Centre for Internet and Society, available at <a href="http://cis-india.org/">http://cis-india.org</a> (last accessed 22 April, 2016) for details of the organization, and, our work.</p>
</div>
<div id="ftn3">
<p><a name="_ftn3"></a> Make in India, available at <a href="http://www.makeinindia.com/home">http://www.makeinindia.com/home</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn4">
<p><a name="_ftn4"></a> Digital India, available at <a href="http://www.digitalindia.gov.in/">http://www.digitalindia.gov.in/</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn5">
<p><a name="_ftn5"></a> See Nehaa Chaudhari, The Curious Case of the CCI:Competition Law and SEP Regulation in India, presented at the 4th Global Congress on Intellectual Property and the Public Interest, available at <a href="http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-india"> http://cis-india.org/a2k/blogs/the-curious-case-of-the-cci-competition-law-and-sep-regulation-in-india </a> (last accessed 21 April, 2016) for further details on relevant provisions.</p>
</div>
<div id="ftn6">
<p><a name="_ftn6"></a> In the High Court of Delhi, W.P.(C) 464/2014 & CM Nos. 911/2014 & 915/2014, judgment delivered on 30 March, 2016. Hereafter referred to as the Ericsson-CCI judgment.</p>
</div>
<div id="ftn7">
<p><a name="_ftn7"></a> Id.</p>
</div>
<div id="ftn8">
<p><a name="_ftn8"></a> Id.</p>
</div>
<div id="ftn9">
<p><a name="_ftn9"></a> Under Articles 226 and 227 of the Constitution of India, and, under Article 32 of the Constitution of India, for the High Courts and the Supreme Court, respectively.</p>
</div>
<div id="ftn10">
<p><a name="_ftn10"></a> Agreement on Trade-Related Aspects of Intellectual Property Rights, available at <a href="https://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm">https://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn11">
<p><a name="_ftn11"></a> KEI Staff, 2015 October 15 version: RCEP IP Chapter, available at <a href="http://keionline.org/node/2472">http://keionline.org/node/2472</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn12">
<p><a name="_ftn12"></a> BIS Act, 2016, available at <a href="http://www.bis.org.in/bs/bsindex.asp">http://www.bis.org.in/bs/bsindex.asp</a> (last accessed 21 April, 2016).</p>
</div>
<div id="ftn13">
<p><a name="_ftn13"></a> TSDSI, Intellectual Property Rights Policy, available at <a href="http://www.tsdsi.org/media/Help/2014-12-17/TSDSI-PLD-40-V1.0.0-20141217.pdf"> http://www.tsdsi.org/media/Help/2014-12-17/TSDSI-PLD-40-V1.0.0-20141217.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn14">
<p><a name="_ftn14"></a> Id at Clause 3.1.</p>
</div>
<div id="ftn15">
<p><a name="_ftn15"></a> Id at Clause 5.1.</p>
</div>
<div id="ftn16">
<p><a name="_ftn16"></a> Id at Clause 5.2.</p>
</div>
<div id="ftn17">
<p><a name="_ftn17"></a> Id at Clause 5.5.</p>
</div>
<div id="ftn18">
<p><a name="_ftn18"></a> Id at Clauses 7.1. and 7.2.</p>
</div>
<div id="ftn19">
<p><a name="_ftn19"></a> Id at Clause 7.2.1.a (iii).</p>
</div>
<div id="ftn20">
<p><a name="_ftn20"></a> Id at Clause 7.2.1.b(iii).</p>
</div>
<div id="ftn21">
<p><a name="_ftn21"></a> Id at Clause 7.3.</p>
</div>
<div id="ftn22">
<p><a name="_ftn22"></a> GISFI, Intellectual Property Rights Policy, available at <a href="http://www.gisfi.org/ipr_policy/gisfi_intellectual_property_righ.htm"> http://www.gisfi.org/ipr_policy/gisfi_intellectual_property_righ.htm </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn23">
<p><a name="_ftn23"></a> Id at Clauses 6.2.1.a(iii) and 6.2.1.b(iii).</p>
</div>
<div id="ftn24">
<p><a name="_ftn24"></a> See W3C, Patent Policy, available at <a href="https://www.w3.org/Consortium/Patent-Policy-20040205/">https://www.w3.org/Consortium/Patent-Policy-20040205/</a> (last accessed 22 April, 2016) for more details on their royalty-free licences.</p>
</div>
<div id="ftn25">
<p><a name="_ftn25"></a> See OMA, Use Agreement, available at <a href="http://openmobilealliance.org/about-oma/policies-and-terms-of-use/use-agreement/"> http://openmobilealliance.org/about-oma/policies-and-terms-of-use/use-agreement/ </a> (last accessed 22 April, 2016) for more details on their royalty-free licences.</p>
</div>
<div id="ftn26">
<p><a name="_ftn26"></a> See Rohini Lakshané, Open Letter to PM Modi, available at <a href="http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi">http://cis-india.org/a2k/blogs/open-letter-to-prime-minister-modi</a> (last accessed 22 April, 2016) for further details of CIS' proposal.</p>
</div>
<div id="ftn27">
<p><a name="_ftn27"></a> Rohini Lakshané, CIS, List of Technical Standards and IP Types (Working document), available at <a href="https://drive.google.com/file/d/0B8SgjShAjhbtaml5eW50bS01d2s/view?usp=sharing"> https://drive.google.com/file/d/0B8SgjShAjhbtaml5eW50bS01d2s/view?usp=sharing </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn28">
<p><a name="_ftn28"></a> Mark Lemley and Carl Shapiro, Patent Holdup and Royalty Stacking,<i> 85 Tex. L. Rev. at 2015</i>; See also, for e.g., RPX Corporation, Amendment No. 3 to Form S-l, 11 Apr. 2011, at 59, available at <a href="http://www.sec.gov/Archives/edgar/data/1509432/000119312511101007/ds1a.htm"> http://www.sec.gov/Archives/edgar/data/1509432/000119312511101007/ds1a.htm </a> (last accessed 22 April, 2016), quoting - <i>"Based on our research, we believe there are more than 250,000 active patents relevant to today's smartphones…"</i>.; See further Steve Lohr, Apple- Samsung Case Shows Smartphone as Legal Magnet,<i> </i>New York Times, 25 Aug. 2012, available at <a href="http://www.nytimes.com/2012/08/26/technology/apple-samsung-case-shows-smartphone-as-lawsuit-magnet.html"> http://www.nytimes.com/2012/08/26/technology/apple-samsung-case-shows-smartphone-as-lawsuit-magnet.html </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn29">
<p><a name="_ftn29"></a> Jorge L. Contreras and Rohini Lakshané, Patents and Mobile Devices in India: An Empirical Survey, available at <a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486">http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2756486</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn30">
<p><a name="_ftn30"></a> Ann Armstrong, Joseph J. Mueller and Timothy D. Syrett, The Smartphone- Royalty Stack:Surveying Royalty Demands for the Components Within Modern Smartphones, available at <a href="https://www.wilmerhale.com/uploadedFiles/Shared_Content/Editorial/Publications/Documents/The-Smartphone-Royalty-Stack-Armstrong-Mueller-Syrett.pdf"> https://www.wilmerhale.com/uploadedFiles/Shared_Content/Editorial/Publications/Documents/The-Smartphone-Royalty-Stack-Armstrong-Mueller-Syrett.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn31">
<p><a name="_ftn31"></a> Florian Mueller,<i> </i>Ericsson Explained Publicly why it Collects Patent Royalties from Device (Not Chipset) Makers, available at <a href="http://www.fosspatents.com/2014/01/ericsson-explained-publicly-why-its.html"> http://www.fosspatents.com/2014/01/ericsson-explained-publicly-why-its.html </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn32">
<p><a name="_ftn32"></a> Romit Guha and Anandita Singh Masinkotia, PM Modi's Digital India Project:Government to Ensure that Every Indian has a Smartphone by 2019, available at <a href="http://articles.economictimes.indiatimes.com/2014-08-25/news/53205445_1_digital-india-india-today-financial-services"> http://articles.economictimes.indiatimes.com/2014-08-25/news/53205445_1_digital-india-india-today-financial-services </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn33">
<p><a name="_ftn33"></a> Nehaa Chaudhari,<i> </i>Standard Essential Patents on Low-Cost Mobile Phones in India: A Case to Strengthen Competition Regulation?, available at <a href="http://www.manupatra.co.in/newsline/articles/Upload/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf"> http://www.manupatra.co.in/newsline/articles/Upload/08483340-C1B9-4BA4-B6A9-D6B6494391B8.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn34">
<p><a name="_ftn34"></a> See part 10.2.2. of the Discussion Paper, at page 25.</p>
</div>
<div id="ftn35">
<p><a name="_ftn35"></a> J.Gregory Sidak, FRAND in India:The Delhi High Court's Emerging Jurisprudence on Royalties for Standard-Essential Patents, available at <a href="http://jiplp.oxfordjournals.org/content/early/2015/06/11/jiplp.jpv096.full"> http://jiplp.oxfordjournals.org/content/early/2015/06/11/jiplp.jpv096.full </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn36">
<p><a name="_ftn36"></a> Appeal from the United States District Court for the Eastern District of Texas in No. 6:11-cv-00343-LED, decided on 03 December, 2015, available at. <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1066.Opinion.12-1-2015.1.PDF"> http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1066.Opinion.12-1-2015.1.PDF </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn37">
<p><a name="_ftn37"></a> Id.</p>
</div>
<div id="ftn38">
<p><a name="_ftn38"></a> Kumkum Sen, News on Royalty Payments Brings Cheer in New Year, available at <a href="http://www.business-standard.com/article/economy-policy/news-on-royalty-payment-brings-cheer-in-new-year-110010400044_1.html"> http://www.business-standard.com/article/economy-policy/news-on-royalty-payment-brings-cheer-in-new-year-110010400044_1.html </a> (last accessed 21 April, 2016).</p>
</div>
<div id="ftn39">
<p><a name="_ftn39"></a> See Sanjana Govil, Putting a Lid on Royalty Outflows- How the RBI Can Help Reduce India's IP Costs<i>, </i>available at <a href="http://cis-india.org/a2k/blogs/lid-on-royalty-outflows">http://cis-india.org/a2k/blogs/lid-on-royalty-outflows</a> (last accessed 21 April, 2016), for a discussion on the introduction of royalty caps in the early 1990s, and its success in reducing the flow of money out of India.</p>
</div>
<div id="ftn40">
<p><a name="_ftn40"></a> Supra note 33.</p>
</div>
<div id="ftn41">
<p><a name="_ftn41"></a> Nehaa Chaudhari, Letter for Establishment of Patent Pool for Low-cost Access Devices through Compulsory Licenses, available at <a href="http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices"> http://cis-india.org/a2k/blogs/letter-for-establishment-of-patent-pool-for-low-cost-access-devices </a> <span> </span> (last accessed 21 April, 2016).</p>
</div>
<div id="ftn42">
<p><a name="_ftn42"></a> Supra note 26.</p>
</div>
<div id="ftn43">
<p><a name="_ftn43"></a> Rohini Lakshané, FAQ: CIS' proposal to form a patent pool of critical mobile technology, September 2015, available at <a href="http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies"> http://cis-india.org/a2k/blogs/faq-cis-proposal-for-compulsory-licensing-of-critical-mobile-technologies </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn44">
<p><a name="_ftn44"></a> Id.</p>
</div>
<div id="ftn45">
<p><a name="_ftn45"></a> See the Ericsson-CCI case, supra note 6, for Intex's submissions as discussed by Justice Bakhru.</p>
</div>
<div id="ftn46">
<p><a name="_ftn46"></a> Id.</p>
</div>
<div id="ftn47">
<p><a name="_ftn47"></a> Rohini Lakshané, Compilation of Mobile Phone Patent Litigation Cases in India, available at <a href="http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india"> http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india </a> (last accessed 21 April, 2016).</p>
</div>
<div id="ftn48">
<p><a name="_ftn48"></a> See the Ericsson-CCI case, supra note 6, at paragraph 19.2.</p>
</div>
<div id="ftn49">
<p><a name="_ftn49"></a> Supra note 47.</p>
</div>
<div id="ftn50">
<p><a name="_ftn50"></a> See the Ericsson-CCI judgment, supra note 6, at paragraphs 88-105.</p>
</div>
<div id="ftn51">
<p><a name="_ftn51"></a> Section 19(4) of the Competition Act. See also <i>Competition Commission of India</i> v. <i>Steel Authority of India and Another</i>, (2010) 10 SCC 744.</p>
</div>
<div id="ftn52">
<p><a name="_ftn52"></a> Section 115 of the Patents Act, 1970.</p>
</div>
<div id="ftn53">
<p><a name="_ftn53"></a> <i>Huawei Technologies Co. Ltd </i> v.<i> ZTE Corp. and ZTE Deutschland</i>, Judgment of the Court (Fifth Chamber) of 16 July 2015 in GmbH C-170/13.</p>
</div>
<div id="ftn54">
<p><a name="_ftn54"></a> Third Party United States Fed. Trade Commission's Statement on the Public Interest, <i>In re Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof</i>, U.S. Int'l Trade Comm'n, Inv. No. 337-TA-745 (Jun. 6, 2012).</p>
</div>
<div id="ftn55">
<p><a name="_ftn55"></a> Jorge L. Contreras, A Brief History of FRAND: Analyzing Current Debates in Standard Setting and Antitrust Through a Historical Lens<i>,</i> 80 Antitrust Law Journal 39 (2015), available at <span>h</span><a href="http://ssrn.com/abstract=2374983">ttp://ssrn.com/abstract=2374983</a><span> or</span> <a href="http://dx.doi.org/10.2139/ssrn.2374983">http://dx.doi.org/10.2139/ssrn.2374983</a><a href="http://dx.doi.org/10.2139/ssrn.2374983"> </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn56">
<p><a name="_ftn56"></a> Section 146(2) of the Patents Act, 1970..</p>
</div>
<div id="ftn57">
<p><a name="_ftn57"></a> Sai Vinod, Patent Office Finally Takes Form 27s Seriously, available at <a href="http://spicyip.com/2013/02/patent-office-finally-takes-form-27s.html"> http://spicyip.com/2013/02/patent-office-finally-takes-form-27s.html </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn58">
<p><a name="_ftn58"></a> Order No. 45/2013 (Intellectual Property Appellate Board, Chennai), available at <a href="http://www.ipab.tn.nic.in/045-2013.htm">http://www.ipab.tn.nic.in/045-2013.htm</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn59">
<p><a name="_ftn59"></a> Intellectual Property India, Public Notice, available at <a href="http://www.ipindia.nic.in/iponew/publicNotice_Form27_12Feb2013.pdf">http://www.ipindia.nic.in/iponew/publicNotice_Form27_12Feb2013.pdf</a> (last accessed 22 April, 2016) <i>and</i> Intellectual Property India, Public Notice, available at <a href="http://ipindia.nic.in/iponew/publicNotice_24December2009.pdf">http://ipindia.nic.in/iponew/publicNotice_24December2009.pdf</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn60">
<p><a name="_ftn60"></a> Supra note 57.</p>
</div>
<div id="ftn61">
<p><a name="_ftn61"></a> Id.</p>
</div>
<div id="ftn62">
<p><a name="_ftn62"></a> See research findings available at <a href="http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf"> http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn63">
<p><a name="_ftn63"></a> In the High Court of Delhi, W.P.(C) 5590/2015. This litigation is currently ongoing. See, illustratively, Mathews P. George, <i>Patent Working in India: Delhi HC issues notice in Shamnad Basheer </i>v<i>. Union of India & Ors. - I</i>, available at <a href="http://spicyip.com/2015/09/patent-working-in-india-delhi-hc-issues-notice-in-shamnad-basheer-v-union-of-india-ors-i.html"> http://spicyip.com/2015/09/patent-working-in-india-delhi-hc-issues-notice-in-shamnad-basheer-v-union-of-india-ors-i.html </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn64">
<p><a name="_ftn64"></a> In response to an RTI request made to the IPO in Mumbai for forms unavailable on the website, CIS received a reply stating, "As thousand [sic] of Form -27 are filed in this office, it is very difficult to segregate Form-27 for the patent numbers enlisted in your RTI application as it needs diversion of huge official staff/ manpower and it will affect day to day [sic] work of this office." This research is ongoing and unpublished. Please contact us for a copy of the RTI application and the response received.</p>
</div>
<div id="ftn65">
<p><a name="_ftn65"></a> WIPO Secretariat<i>, </i>Patent Pools and Antitrust - A Comparative Analysis, available at <a href="https://docs.google.com/viewer?url=http%3A%2F%2Fwww.wipo.int%2Fexport%2Fsites%2Fwww%2Fip-competition%2Fen%2Fstudies%2Fpatent_pools_report.pdf"> https://docs.google.com/viewer?url=http%3A%2F%2Fwww.wipo.int%2Fexport%2Fsites%2Fwww%2Fip-competition%2Fen%2Fstudies%2Fpatent_pools_report.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn66">
<p><a name="_ftn66"></a> Form 27, The Patents Act, available at <a href="http://ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20-%20html/Forms/Form-27.pdf"> http://ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20-%20html/Forms/Form-27.pdf </a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn67">
<p><a name="_ftn67"></a> David J. Goodman and Robert A. Myers, 3G Cellular Standards and Patents, available at <a href="http://patentlyo.com/media/docs/2009/03/wirelesscom2005.pdf">http://patentlyo.com/media/docs/2009/03/wirelesscom2005.pdf</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn68">
<p><a name="_ftn68"></a> Darien CT, Review of Patents Declared as Essential to WCDMA through December, 2008, available at <a href="http://www.frlicense.com/wcdma1.pdf">http://www.frlicense.com/wcdma1.pdf</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn69">
<p><a name="_ftn69"></a> Supra note 67.</p>
</div>
<div id="ftn70">
<p><a name="_ftn70"></a> Donald L. Martin and Carl De Meyer, Patent Counting, a Misleading Index of Patent Value: A Critique of Goodman & Myers and its Uses, available at <a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=949439">http://papers.ssrn.com/sol3/papers.cfm?abstract_id=949439</a> (last accessed 22 April, 2016).</p>
</div>
<div id="ftn71">
<h5><a name="h.b6s0l5evilsq"></a> <a name="_ftn71"></a> Rohini Lakshané, Joining the Dots in India's Big-Ticket Mobile Phone Patent Litigation<i>,</i> available at <a href="http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation"> http://cis-india.org/a2k/blogs/joining-the-dots-in-indias-big-ticket-mobile-phone-patent-litigation </a> (last accessed 22 April, 2016). See also supra note 47 for more details.</h5>
</div>
<div id="ftn72">
<p><a name="_ftn72"></a> Supra note 55.</p>
</div>
<div id="ftn73">
<p><a name="_ftn73"></a> 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), modified and aff'd, 446 F. 2d 295 (2d Cir. 1971), cert. denied, 404 U.S. 870 (1971).</p>
</div>
</div>
<div style="text-align: justify; ">
<hr size="1" width="33%" align="left" />
<div>
<div id="_com_1"><a name="_msocom_1"></a>
<p>2015</p>
</div>
</div>
<div>
<div id="_com_2"><a name="_msocom_2"></a>
<p>They filed it in 2011</p>
</div>
</div>
<div>
<div id="_com_3"><a name="_msocom_3"></a>
<p>The 2011 filing only includes pharma, BTW: http://spicyip.com/docs/Form%2027s.pdf. Also, this writ is from May 2015: http://spicyip.com/wp-content/uploads/2015/05/FORM-27-WP-1R-copy.pdf Anyway, I'll leave it as it is.</p>
</div>
</div>
</div>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/comments-on-department-of-industrial-policy-and-promotion-discussion-paper-on-standard-essential-patents-and-their-availability-on-frand-terms'>https://cis-india.org/a2k/blogs/comments-on-department-of-industrial-policy-and-promotion-discussion-paper-on-standard-essential-patents-and-their-availability-on-frand-terms</a>
</p>
No publisherAnubha Sinha, Nehaa Chaudhari and Rohini LakshaneAccess to KnowledgePervasive TechnologiesCompetitionFeaturedPatents2016-05-03T02:30:15ZBlog EntryCCI allowed to probe Ericsson: FAQs on Ericsson’s disputes with Micromax and Intex
https://cis-india.org/a2k/blogs/the-quint-nehaa-chaudhari-april-30-2016-cci-allowed-to-probe-ericsson
<b>The blog post is an analysis of the recent decision of the Delhi High Court, clarifying that the Competition Commission of India could investigate Ericsson for a violation of competition law. A shorter version of this blog post was published in the Quint on April 30, 2016.</b>
<div>Read the original article published by <a class="external-link" href="http://www.thequint.com/technology/2016/04/29/all-you-want-to-know-about-the-ericsson-micromax-patent-dispute-intex-intellectual-property-rights-make-in-india">Quint</a> on April 30 here.</div>
<hr />
<p style="text-align: justify; ">The mobile phone is the <a href="http://cis-india.org/a2k/blogs/Standard-Essential-Patents-on-Low-Cost-Mobile-Phones-in-India-A-Case-to-Strengthen-Competition-Regulation.pdf"><span>sole access point to the internet</span></a> for about half of India’s population. It has an important role to play in India’s development story, one that is amplified given the central government’s <a href="http://www.digitalindia.gov.in/content/information-all"><span>focus</span></a> on <a href="http://www.digitalindia.gov.in/content/e-governance-%E2%80%93-reforming-government-through-technology"><span>leveraging the internet</span></a> for better <a href="http://www.digitalindia.gov.in/content/ekranti-electronic-delivery-services"><span>governance</span></a>. The government has recognized this importance, evidenced through <a href="http://www.digitalindia.gov.in/content/electronics-manufacturing"><span>electronics manufacturing incentives</span></a> and, a stated commitment to ensure ‘<a href="http://www.digitalindia.gov.in/content/universal-access-mobile-connectivity"><span>universal access to mobile connectivity’</span></a>. Homegrown brands, including Micromax and Intex, with their affordable, low-cost mobile phones, play an important role in this development story.</p>
<p style="text-align: justify; ">In March, 2013, the Swedish multinational, Ericsson, sued Micromax for patent infringement, setting in motion a <a href="http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india"><span>series of events</span></a>, with the potential to disturb India’s mobile phone dream. Then, last month, the Delhi High Court (the Court) <a href="http://lobis.nic.in/ddir/dhc/VIB/judgement/30-03-2016/VIB30032016CW4642014.pdf"><span>recognized</span></a> the authority of the market regulator - the Competition Commission of India (CCI) - to probe Ericsson for its allegedly anticompetitive conduct.</p>
<p style="text-align: justify; "><strong>Why did Ericsson sue Micromax?</strong></p>
<p style="text-align: justify; ">Ericsson claims that Micromax’s mobile phones infringe its standard essential patents (SEPs) on mobile phone technologies, including 3G and EDGE.</p>
<p style="text-align: justify; "><strong>How are some patents identified as SEPs?</strong></p>
<p style="text-align: justify; ">International Standard Setting Organizations (SSOs) – such as <a href="http://www.etsi.org/"><span>ETSI</span></a> or <a href="https://www.ieee.org/index.html"><span>IEEE</span></a> - recognize international standards. 3G and Wi-Fi are examples of such internationally recognized standards.</p>
<p style="text-align: justify; ">According to the <a href="http://www.etsi.org/standards/how-does-etsi-make-standards"><span>SSOs</span></a>, the determination of standards depends on consensus, driven by their <a href="http://www.etsi.org/membership"><span>members</span></a>. After a standard is determined, SEP owners (including Ericsson) <strong><span>voluntarily disclose</span></strong> which of their patents are <strong><i>essential</i></strong> to the determined standard, and, undertake to license these on fair, reasonable and non-discriminatory (FRAND) terms, to any willing licensee.</p>
<p style="text-align: justify; "><strong>Does this give rise to legal issues?</strong></p>
<p style="text-align: justify; ">This process results in a variety of (<a href="https://cis-india.org/a2k/blogs/well-documented"><span>well-documented</span></a>) legal questions, many of which have been raised in India’s SEP litigation, and have been alluded to by the Court in the present judgment. The Court has recognized the potential for SEPs to create dominant positions for their owners, noting that “any technology accepted as a standard would have to be <strong><span>mandatorily</span></strong> <strong><span>followed </span></strong>[emphasis, mine] by all enterprises in the particular industry.”</p>
<p style="text-align: justify; ">Some other legal issues around SEPs include the enforceability of FRAND commitments; determining what would constitute ‘fair’, ‘reasonable’ and, ‘non-discriminatory’; the possibility of non/incomplete disclosure by patent owners; and, a refusal by licensees to negotiate FRAND terms in good faith. A related issue that has received comparatively less attention is the essentiality of peripheral or, non standard but essential patents, where there is no obligation to license on FRAND terms.</p>
<p style="text-align: justify; "><strong>Have there been other SEP infringement suits filed in India?</strong></p>
<p style="text-align: justify; ">Yes. Besides Micromax, Ericsson has also <a href="http://cis-india.org/a2k/blogs/compilation-of-mobile-phone-patent-litigation-cases-in-india"><span>sued other</span></a> low-cost mobile phone sellers/manufacturers, homegrown and otherwise, for patent infringement. These include Intex, Lava, Gionee, Xia and iBall. In addition, Vringo has also sued ZTE and Asus, separately. [In this article, we will limit ourselves to a discussion on Ericsson’s suits against Micromax and Intex.]</p>
<p style="text-align: justify; "><strong>What did Micromax and Intex do after being sued by Ericsson?</strong></p>
<p style="text-align: justify; ">Ericsson’s suits were followed by deliberations between the parties (Ericsson and Micromax, and, Ericsson and Intex, independently) and some interim orders by the Court. This litigation is ongoing, and final orders are awaited.</p>
<p style="text-align: justify; ">Meanwhile, both Micromax and Intex have pursued a series of other remedies. Intex has filed applications for the revocation of Ericsson’s patents. In addition, Micromax and Intex have each filed separate complaints under India’s Competition Act, 2002 before the CCI, alleging that Ericsson had abused its dominant position. This is a punishable offence under Indian competition law.</p>
<p style="text-align: justify; ">Micromax and Intex have both claimed that Ericsson’s royalty rates were excessive. In addition, Micromax has objected to Ericsson’s use of the threat of injunctions and custom seizures, and, has also claimed that Ericsson’s conduct results in a denial of market access for Indian handset manufacturers. Intex has alleged, <i>inter alia, </i>that it was forced into signing an onerous non disclosure agreement by Ericsson; and, that it was forced to negotiate licences without a complete disclosure of its patents by Ericsson.</p>
<p style="text-align: justify; ">The CCI, finding there to be a <i>prima facie</i> case in each of the above complaints, ordered the Director General to undertake an investigation into the allegations made by both – Micromax and Intex. These orders were challenged by Ericsson in the Court.</p>
<p style="text-align: justify; "><strong>On what grounds did Ericsson challenge the CCI’s orders?</strong></p>
<p style="text-align: justify; ">Briefly, Ericsson argued-</p>
<p style="text-align: justify; ">(a) that the issue was one of patent law, which barred the applicability of competition law;</p>
<p style="text-align: justify; ">(b) that it was not an ‘enterprise’ under the Competition Act, 2002, and, that the CCI was empowered to check anticompetitive conduct only of ‘enterprises’;</p>
<p style="text-align: justify; ">(c) that its conduct was not anticompetitive since it was only exercising its rights to enforce its patents;</p>
<p style="text-align: justify; ">(d) that since the disputes between the parties were already being heard in other proceedings before the Court, the CCI could not adjudicate them; and,</p>
<p style="text-align: justify; ">(e) that Intex and Micromax were barred from making such allegations. Ericsson opined that since they had challenged its ownership of the SEPs, through revocation of petition applications (filed by Intex), and a denial of infringement claims (by Micromax), they could not now present a complaint premised on it being the owner of those same SEPs.</p>
<p style="text-align: justify; "><strong>What did the Court hold?</strong></p>
<p style="text-align: justify; ">Rejecting Ericsson’s arguments, the Court held that the CCI <strong><span>did</span></strong> [emphasis, mine] have the jurisdiction to examine if Ericsson’s conduct was anticompetitive, finding it to be an ‘enterprise’ under the Competition Act, 2002. However, the Court was clear that the CCI’s actions could be subject to judicial review by the High Court. It also found that the mere applicability of the Patents Act, 1970, did not bar the applicability of competition law, since the legislations covered distinct fields and served different purposes. Further, it opined that Micromax and Intex were free to explore alternative remedies; neither this pursuit, nor, the pendency of disputes on similar issues before the Court, was a bar to the CCI’s jurisdiction.</p>
<p style="text-align: justify; ">Interestingly, while not adjudicating the issue of Ericsson’s abuse of dominance in this particular case, Justice Bakhru, citing its conduct as presented by the other parties said that in some cases, “such conduct, if it is found, was directed in pressuring an implementer to accept non-FRAND terms, would amount to an abuse of dominance.”</p>
<p style="text-align: justify; "><strong>What does the judgment mean for India’s homegrown brands?</strong></p>
<p style="text-align: justify; ">The judgment is a boost for India’s home grown manufacturers in their battle against global patent holders. However, while it certainly validates the role and powers of India’s young market regulator, it will no doubt be appealed. One also expects multiple appeals over the CCI’s findings in the present and, future similar cases.</p>
<p style="text-align: justify; ">It is impossible to predict the outcome of legal proceedings in SEP litigation. Accordingly, Micromax, Intex (and others) would do well to augment their own patent portfolios (either by filing their own patents, or, by acquiring those of other companies). This may create a more level playing field, opening up alternate channels of negotiation, including, cross-licensing. They may also seek access to Ericsson’s SEPs under the compulsory licensing mechanism in India’s patent law.</p>
<p style="text-align: justify; "><strong>What does the government have to say?</strong></p>
<p style="text-align: justify; ">The Department of Industrial Policy and Promotion has recently released a <a href="http://dipp.nic.in/english/Discuss_paper/standardEssentialPaper_01March2016.pdf"><span>discussion paper</span></a> on these issues, inviting <a href="http://cis-india.org/a2k/blogs/summary-of-cis-comments-to-dipp2019s-discussion-paper-on-seps-and-their-availability-on-frand-terms"><span>comments</span></a> from <a href="http://cis-india.org/a2k/blogs/responses-to-the-dipps-discussion-paper-on-seps-and-their-availability-on-frand-terms"><span>stakeholders</span></a>. It would be unsurprising if the government intends to regulate this space, given the strong implications for not just its flagship Make in India and Digital India programs, but also its foreign policy narrative on protecting IPRs and fostering innovation. Immediate welcome steps from the government would be a final word on the <a href="http://dipp.nic.in/English/Schemes/Intellectual_Property_Rights/IPR_Policy_24December2014.pdf"><span>National IPR Policy</span></a>, and, the adoption of the<a href="http://www.mca.gov.in/Ministry/pdf/Revised_Draft_National_Competition_Policy_2011_17nov2011.pdf"><span> National Competition Policy</span></a>, awaited since 2014 and 2011, respectively.</p>
<p>
For more details visit <a href='https://cis-india.org/a2k/blogs/the-quint-nehaa-chaudhari-april-30-2016-cci-allowed-to-probe-ericsson'>https://cis-india.org/a2k/blogs/the-quint-nehaa-chaudhari-april-30-2016-cci-allowed-to-probe-ericsson</a>
</p>
No publishernehaaAccess to KnowledgePervasive TechnologiesIntellectual Property RightsCompetition LawPatents2016-05-01T13:46:52ZBlog Entry