CIS Submission to DIPP and CGPDTM at meeting with IP Stakeholders

Submission to the Department of Industrial Planning andPromotion (DIPP) at Meeting with IP Stakeholders on 07 December, 2017

1. As the DIPP is aware, the Indianmobile device manufacturing industry is mired in issues related to licensing ofstandard essential patents (SEPs). Disputes have resulted in imposition ofheavy interim royalty rates on Indian manufacturers, payable to foreign SEPholders. Section 146(2) of the Patent Act, 1970 mandates patentees to provideinformation 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 patenteessupports the goal of making unworked patents available for compulsory licensingin India, both to promote economic development and public access to patentedproducts. Penalties for failing to furnish such information (via Form 27) aresteep, potentially resulting in fines or imprisonment.

2. We note that in 2009, 2013 and 2015the Controller issued public notices calling on patent owners to comply withtheir obligations to file statements of working on Form 27. Further, onFebruary 12, 2013, the Indian Patent Office (IPO) announced plans to make Form27 submissions for the year 2012 available to the public via the IPO website.

3. We commend the efforts of the IPO, however,our empirical research on ICT innovations[i] as well as by Prof. ShamnadBasheer (on ICT and pharmaceutical sector)[ii] reveals that there are seriouslapses as far as compliance and enforcement of statutory provisions mandatingfiling of Form 27 are concerned.

4. In the past year, we studied dataavailable from 2009- 2016 for the mobile device sector, and could only identifyand access 4,916 valid Forms 27, corresponding to 3,126 mobile device patents,leaving  1,186 Indian patents for which aForm 27 could have been filed, but was not found.[iii]  For a surprising number of Form 27s (3%) theworking status of the relevant patent was not designated.

Even among the Form 27s that had beenobtained, almost none contained useful information regarding the working of thesubject patents or fully complying with the informational requirements of theIndian Patent Rules. Many patentees simply omitted required descriptiveinformation from their forms without any explanation.[iv]

Via our research we also gatheredcomplaints raised by patentees and industry observers regarding the structureof the Form 27 requirement itself. For example, patents covering complex,multi-component products that embody dozens of technical standards andthousands of patents may not necessarily be amenable to the individual-leveldata requested by Form 27.

5. Regardless, we submit that thesetechnical difficulties should not hinder the critical statutory requirementplaced on patent holders to diligently comply with Form 27 compliance. In thecontext of licensing of SEPs, several stakeholders recently suggested solutionsas revealed from our study of the submissions made to the TRAI Consultation onPromoting Local Telecom Manufacturing[v]:

• Twoindustry associations, namely Telecom Equipment Manufacturers Association ofIndia  (TEMA) and Telecom Equipment & Services Export Promotion Council (TEPC) and a telecommunicationenabler Vihan Network Limited recommended that a modified and longer version of Form 27 (Form 27S) may be designed for SEPholders that should apply right at the filing stage. Section 159 of thePatent Act, 1970 empowers the central government to make such modifications to the form, as necessary.[vi]
• Further,Prof. T Ramakrishna (MHRD Chair on Intellectual Property Rights) at NLSIU, specificallyrecommended that Form 27 may be amendedto include a new column, which may require the patent holder to declareif their patent forms a part of any standard and in case of affirmative answer– the name of the Standard Setting Organisation and corresponding standard ofwhich it is a part.

 6. Further, we would like to drawattention to how our study was limited by the technical capabilities of theIndian Patent Office’s online Form 27 repository, such as[vii]:

• IPAIRSreturned either a 404 error or Connection Time Out (“site is taking toolong to respond”) http://ipindiaonline.gov.in/patentsearch/search/index.aspx. In our opinion, it could beredirected to InPASS as it uses the same search engine as InPASS.  Further, http://ipindia.nic.in/patsea.htm returned a 404 error.
• SomePDFs of the forms comprise scanned image files without OCR of the text. Thismakes them inaccessible to the visually impaired, and prevents search anddiscoverability of their content. This also makes them less usable bypreventing copying and selection of text.
• In some cases, it was difficult to identifywhich one in the list of documents associated with a patent is Form 27, becauseof obscure filenames.

• Forexample, for Patent Number 262228, Form 27 was named 68.262228.pdf, as found onIPAIRS.

• ForPatent number 260603, the filename for Form 27 was “ipindiaonline.gov.in_epatentfiling_online_frmPreview.asp.pdf”on IPAIRS.

• Inconsistency in search results found onIPAIRS. Searching for the peripheral documents of the patents, returned theresults, “No PDF found” for one full week. The next week, thedocuments started showing. Some searches returned results for an entirelydifferent patent number.
• Sometimes,Form 27 found on InPASS was not found on IPAIRS and vice versa.
• Runtimeerrors occur due to browser caching.

7. We are thankful to DIPP for theopportunity to make these submissions. It would be our pleasure and privilegeto discuss these submissions and recommendations in details with the DIPP. Wealso offer our assistance on other matters aimed at developing a suitablepolicy framework for SEPs and FRAND in India, and, working towards sustainedinnovation, manufacture and availability of mobile technologies in India.

Annexure

Complete Data of CIS’Study[i]