India – Government Use Of Patents Debated

A patent confers exclusivity upon the patentee to exploit an invention and to produce, sell or import the patented product or process for a limited period. However, there are some limitations to this exclusive right, such as research exemptions, providing some information to the authorities and the Bolar exception. The Indian Patents Act, 1970 incorporates these exceptions under Sections 47, 100 and 107A.

A recent case in the Bombay High Court explores the exception under Section 100 of the Patent Act, dealing with the use of an invention by the government or its agencies. In Garware Wall Ropes Ltd v Al Chopra and Konkan Railway Corporation Ltd (2009(111) BomLR479), the appellant filed for a temporary injunction as well as rendition of accounts against the respondents for infringing his patent. The respondents pleaded immunity under Section 100, by stating that Section 100 of the Patents Act grants complete protection for using the patents for the work of railways, which is a department of the central Government and such contracts are signed on behalf of the president of India.

The respondents also contested the infringement action by stating that the patens had been in use for at least two decades and there was delay and laches on the part of the appellant. The court ruled that patented locking systems were inventions within the meaning of Section 2(1) (j) of the Patents Act involving inventive steps and the appellant was the true and first inventor. The court also said that the suit was filed in civil court, which took time to give its decision. Moreover, there was no delay or laches as infringement still continued.

The ambit and scope of Section 100 was heeded by the court, after which it  held that: “Under Sections 99 and 100 even a third person, can be allowed to use the patent for the purposes of Government or Government undertakings provided an agreement or license is given by the patentee to such third person and upon payment of royalty.”

Section 47 also identifies instances where the government may import or manufacture any patented product or patented process merely for its own use. To the inventor, a patent system confers certain definite advantages. A search of Section 47 and 48 clarifies that the rights of the patentee under Section 48 are curtailed by provisions of Section 47, but such curtailment is not in entirety, even in respect of Government.

The court recognized that Section 48 creates certain rights in favor of the patentee which cannot be taken away in the manner that was being done. At this stage, the court referred to Section 156, which says that a patent shall have same effect as against Government, as it has against any person. Under Section 47, the government may practice the invention “merely of its own use”, as against this, if they are used by the government or any person authorized by the government under Section 100, it has to be through an agreement or license by the patentee.

Section 47 of the Patents Act also outlines other instances where patented inventions may be used, such as for imparting educational instructions and the distribution of patented medicines in government dispensary or hospitals on account of public service.

This is an important case, as it is the first time the use of inventions by the government falling under Section 100 has been discussed.

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