World Trade Organization Organisation Mondiale du Commerce Organización Mundial del Comercio

Switzerland 22:

Report by the Secretariat: III. Trade policies and practices by measure:  (4) Measures affecting production and trade: (vi) Intellectual property rights:  (b) Patents:  Para. 256:

1. Paragraph 256 of the Report by the Secretariat refers to Section 84, Chapter XVI of the Patents Act 1970 (hereafter: Patents Act) and indicates the conditions for the grant of a compulsory licence in India (the reasonable requirements of the public with respect to the patented invention have not been satisfied; the patented invention is not available at a reasonably affordable price; or it is not worked in India). Switzerland would like to submit the following questions concerning this issue:

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  Article 27.1 of the TRIPS Agreement requires that patents shall be available and patent rights enjoyable without discrimination as to whether products are imported or locally produced. Please confirm that importation of a patented invention is considered as working a patent/a patented invention under Section 84 of the Patents Act.
  
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  Further, Paragraph 256 of the Report of the Secretariat states that the Department of Industrial Policy and Promotions issued a discussion paper on compulsory licensing with a view to developing a predictable environment to use such measure. What is its legal status? Please describe shortly its contents and any possible recommendations or measures the Indian Government envisages under it. Could the Indian authorities indicate where this discussion paper can be obtained?
  

Reply: Working of patent includes importation. However, under Section 83 (b) of the Patents Act, mere importation cannot be considered as working. This has been introduced to prevent abuse of monopoly rights and is in keeping with Article 5 of the Paris Convention and Article 2, 7 and 8 of TRIPS.

The Department of Industrial Policy and Promotion prepared a Discussion Paper on the subject of Compulsory Licensing and hosted the same on its website to invite the views and suggestion on certain issues for resolution. The objective of this exercise was not to invite any change/amendment to the provisions of the Patent Act 1970 but only to elicit the suggestions to take an appropriate policy decision whether the existing provisions of the Patents Act, 1970 require any amplification through issuing of guidelines by the Government. After obtaining and examining the suggestions on the said Discussion Paper, the Government has decided that there is no need to issue additional guidelines for the issue of Compulsory License and issued a press release to this effect to conclude the matter. The said Discussion Paper is available on the official website of this Department i.e. www.dipp.nic.in.