Compulsory Licensing and Revocation under the Patents Act, 1970

Understand Compulsory Licensing, Revocation and Patent Infringement

Key rules to remember

Section 84(1): when and on what grounds

Application after 3 years from grant of patent + any person interested + ground (a) reasonable requirements of the public not satisfied, or (b) not available at a reasonably affordable price, or (c) not worked in India

Any one ground is enough. The three years run from the date of grant, not from the date of filing.

Section 84(6): factors the Controller considers

Nature of invention and time elapsed + ability of applicant + capacity to bear risk and capital + efforts to get a voluntary licence

The efforts must have failed within a reasonable period, ordinarily not exceeding six months. This efforts requirement does not apply in national emergency, extreme urgency, public non-commercial use or proven anti-competitive practices.

Section 84(7): when public requirements are deemed unmet

Refusal to license on reasonable terms causing prejudice, or demand not met adequately or on reasonable terms, or export market not supplied, or unfair licence conditions, or not worked on commercial scale in India, or working hindered by imports

Section 84(7)(c) covers conditions such as exclusive grant back, preventing challenges to validity and coercive package licensing.

Section 84(2): existing licensee

A holder of a licence under the patent can still apply, and is not estopped by any admission made or by having accepted the licence

Useful for questions on whether a licensee can seek a compulsory licence.

Section 88: Controller's incidental powers

Licences to customers of applicant (88(1)); cancel or amend existing licence (88(2)); licence of other patents of same patentee (88(3)); revision of terms after 12 months of commercial working, only once (88(4))

Section 84(5) allows these powers as incidental to a direction to grant a licence.

Section 91: related patents

Applicant has right to work another patent + is prevented or hindered from working efficiently + able and willing to grant a licence of the other invention on reasonable terms + other invention made a substantial contribution to commercial or industrial activity in India

The licence is non-assignable except with assignment of the respective patents.

Section 92: emergency licences

Central Government notification in the Official Gazette (national emergency, extreme urgency or public non-commercial use) → application by any person interested → Controller grants licence

Under section 92(3), the Controller need not apply the section 87 procedure in such cases, but must inform the patentee as soon as practicable.

Section 85: revocation for non-working

Compulsory licence granted + 2 years from order granting first licence + application by Central Government or any person interested

Grounds are non-working, unmet public requirements or unaffordable price. The application should ordinarily be decided within one year.

How to solve Compulsory Licensing, Revocation and Patent Infringement questions

1. 1Identify the route: general (section 84), related patents (section 91), emergency (section 92) or revocation (section 85).
2. 2Check the time condition: three years from grant for section 84; two years from the first compulsory licence order for section 85; notification first for section 92.
3. 3Name the ground that matches the facts: public requirements unmet, unaffordable price or non-working in India.
4. 4Test the facts against section 84(7) deemed situations and the section 84(6) factors, especially the applicant's efforts to get a voluntary licence.
5. 5State what the Controller may do: grant a licence on terms he deems fit and use section 88 powers where relevant.
6. 6Mention exceptions, such as the efforts requirement not applying in emergencies, and the dropping of section 87 procedure under section 92(3).
7. 7Close with a clear conclusion: whether the application succeeds and what order is likely.

Quickest way: Four-line answer frame

Common mistakes in Compulsory Licensing, Revocation and Patent Infringement

• Counting three years from the date of filing the patent application.

  Students mix up filing, publication and grant dates.

  Fix: Section 84(1) says three years from the date of grant. Write 'grant' every time.

• Saying a compulsory licence is the same as a voluntary licence with a different name.

  Both are called licences and both allow use of the invention.

  Fix: State the difference: voluntary is by the patentee's choice and agreed terms; compulsory is ordered by the Controller on application, with terms set by him.

• Forgetting that revocation under section 85 needs a prior compulsory licence.

  Students treat non-working alone as enough.

  Fix: Write that the application can be made only after two years from the order granting the first compulsory licence.

• Ignoring the applicant's efforts to obtain a voluntary licence.

  Students focus only on the patentee's default.

  Fix: Mention section 84(6)(iv): efforts on reasonable terms for a reasonable period, ordinarily not above six months, unless emergency, public non-commercial use or anti-competitive practice applies.

• Treating section 92 like section 84 and requiring a three-year wait.

  Both sections deal with compulsory licences.

  Fix: Section 92 works on a Central Government notification and applies at any time after sealing of the patent.

Worked examples