Are Standard Essential Patents Barriers to Innovation by SMEs and Startups?

© R Saha

Small and medium enterprises (SMEs), including startups operating in standard-driven sectors such as telecommunication equipment, artificial intelligence (AI), the Internet of Things (IoT), autonomous vehicles, mobile communications, Wi-Fi, computers and laptops, medical devices, drones and fintech, face disproportionate challenges in navigating the Standard Essential Patent (SEP) ecosystem. Compliance with global technical standards is a prerequisite for market acceptance, interoperability, scalability, and integration with existing hardware and software platforms. However, access to the patents essential to these standards is typically possible only through licensing from SEP holders, creating structural disadvantages for smaller firms. 

Structural Disadvantages Faced by SMEs SMEs are at an inherent disadvantage in SEP-related negotiations due to several factors:

 • Minimal involvement in standard-setting activities 

    Small firms rarely participate in the work of Standards Setting Organizations        (SSOs), limiting both influence and early visibility into evolving technical and         licensing frameworks. 

• Limited awareness of standards and SEPs 

    Many enterprises lack foundational knowledge of standards and the role played     by SEPs in governing  standardized technologies. 

• Absence of proprietary SEP portfolios 

    Unlike large technology firms, SMEs generally do not hold SEPs, eliminating            opportunities for cross-licensing and weakening their negotiating position. 

• Challenge in mapping SEP to standards and product 

     Linking SEP claims to a product requires specialized legal and engineering             expertise that is often in short supply in small firms. 

• Difficulty identifying relevant SEPs 

      Patent documents do not disclose  whether they are standard-essential,                 making identification both complex and resource-intensive. 

• Limited understanding of licensing processes 

    SEP licensing involves sophisticated legal, economic, and technical assessments     that SMEs are ill-equipped to handle. 

• High cost of assembling negotiation expertise 

    Raising an experienced in-house or external negotiating team imposes financial     burdens beyond the  reach of most startups and is difficult too. 

As a result, SMEs become heavily reliant on SEP holders—predominantly large multinational corporations—creating significant power imbalances during negotiations. 

Imbalances in SEP Licensing and FRAND Limitations 

Although SEP licensing is governed by Fair, Reasonable, and Non-Discriminatory (FRAND) commitments, the practical operation of this framework is fraught with uncertainty. Key FRAND concepts like fair and reasonable, lack precise definitions, and many jurisdictions—including India—do not have specialized mechanisms to resolve SEP licensing disputes efficiently. Further, SSOs do not independently verify whether declared patents are genuinely essential to a standard. This shifts the burden of essentiality assessment entirely onto licensees, requiring extensive technical and legal analysis. SEP holders may exploit this asymmetry by demanding excessive royalties or imposing restrictive licensing conditions, knowing that smaller firms lack the capacity to challenge such claims effectively. 

Challenges in Assessing Essentiality and Validity 

Determining whether a patent is truly essential, valid, and infringed is particularly challenging for SMEs. For example, over 100,000 5G patent disclosures were reported in 2023. Although many of these patents may not be granted and some of the granted patents may not be SEP. Navigating this landscape under a cloud of uncertainties requires expertise and resources that many firms simply do not possess. Consequently, SMEs face risks of inadvertent infringement, over-licensing, or excessive royalty payments. Some studies indicate that a significant proportion of declared 5G SEPs may not, in fact, be essential—an assertion strongly disputed by SEP holders. 

The navigation complexity is further amplified by the existence of a large number of technical standards documents which may run into tens of thousands. Patent documents themselves provide no indication of SEP status. Establishing essentiality requires detailed claim-by-claim analysis against technical standards, often necessitating independent expert review. While reliance on SEP holders’ declarations may reduce costs, it exposes licensees to strategic information asymmetry. 

Gaps in Standards Knowledge and Education 

The ability to develop globally competitive products depends on a sound understanding of international standards. However, awareness of standards and their legal implications remains limited, particularly in low- and middle-income economies. One contributing factor is the lack of formal education on standards and standardization processes in engineering and technical curricula. Although SSOs maintain databases of declared SEPs, these repositories remain underutilized due to limited awareness and accessibility. It has been reported that a substantial number of mobile communication standards can be implemented by directly utilizing SEPs. 

 Limited Representation in Standard-Setting Organizations 

SMEs have minimal representation within SSOs, restricting their ability to influence technical directions or licensing policies. This lack of participation also limits their understanding of licensing commitments, policy debates, and emerging compliance obligations discussed within these forums. Litigation Risks In the absence of clear and affordable licensing pathways, SMEs are particularly vulnerable to patent litigation. The financial and operational burden of litigation can be catastrophic for smaller firms. In some cases, litigation is used strategically by SEP holders as leverage to secure licensing terms that exceed FRAND expectations. 

Innovation Pressure and Opportunity 

Despite these challenges, access to SEPs remains essential for innovation. Licensing enables firms to build upon cutting-edge standardized technologies and develop differentiated products. SMEs operating at the frontier of standardized technologies can leverage SEPs as platforms for further innovation rather than mere compliance tools. 

The Way Forward 

One potential solution is the creation of a Special Purpose Vehicle (SPV) through which SMEs could collectively access standards documentation, identify declared SEPs, and develop shared technical and legal expertise. Such an initiative would require investment in skilled personnel and access to standards databases and could benefit from targeted government financial support. 

Additionally, there is a pressing need for India to develop a clear, enforceable SEP licensing framework, aligned with but more precise than existing FRAND principles. Such a framework should be binding on SEP holders operating in India and designed to balance innovation incentives with fair market access. The idea is not to regulate licensing but to enable the licensing process to create a win-win situation for all the people concerned and utilize new technologies. 

Standards and SEP literacy and awareness would go a long way in easing the present situation.  Standards being so critical, it should be integrated into engineering and technology curricula. More companies need to become familiar with functioning of SSOs and their intellectual property rights (IPR) policies. 

 SEPs are not anti-innovation like other patents. In fact, they enable global interoperability and put you in the orbit of cutting-edge technologies from where you can see the future and invent. SEPs are indispensable for innovation in standards driven technologies. There is a need to evolve some policy mechanism for facilitating SEP licensing in India. By targeted policy intervention, transparent licensing mechanisms, and institutional support, SEPs would lead to new technological and market opportunities.

Patent filing strategy for inventions used in outer space

Patent filing strategy for inventions used in outer space

R Saha (raghav.saha@gmail.com)

This article looks at some important principles and practical tips for drafting patent applications in respect of inventions related to outer space, with the primary consideration of enforcing patents. Outer space is outside the purview of jurisdiction of any country, hence applicability of jurisdictional principles followed on earth for ownership of property do not apply. For example, can patents be enforced against spacecraft in orbit and what steps should patent holders take to maximize enforcement options on Earth? The journey of space exploration or space missions starts from the earth, inventions are majorly made and implemented on earth using terrestrial resources. One must make the best use of the challenges posed by complexities presented by the combination of terrestrial jurisdictions and extra-terrestrial regions (jurisdictions?).

It is important to make sure that any patent claims, as far as possible, cover the technology in a non-operational (i.e. pre-launch) state, so that the patent can be enforced against parties dealing with the spacecraft before it is launched. Some technologies which are only used in outer space would be spin stabilization of a satellite, momentum wheels, pseudo geostationary orbits, frequency sharing between LEO and GEO satellites and unfolding of solar panels and antennas. An infringement action may be taken when the spacecraft is sitting on the launch pad rather than relying on infringement beginning in outer space.

A spacecraft (satellite) may reconfigure itself in space, say, by deploying solar panels and antennae while in orbit, then the claims should specify the structural configuration of the spacecraft before launch. Based on the claims, it would be easier to identify infringement and take appropriate action.  In this case one can file both product claims for solar cells, motors to deploy cells and method claims for deploying solar cells by using appropriate software and hardware combination. A satellite intending to deploy its solar cells using the protected method might then infringe both product claims off the assembly line and on the launch pad.

Similarly, the components of the satellite, which would almost certainly be manufactured separately, could individually infringe certain claims of the patent. The control circuitry, for example, might infringe the CRM claim as soon as the instructions are loaded onto it, possibly before ever reaching the rest of the satellite.

Every space technology will have a system to interact with ground stations or terrestrial customers. It is advisable to include claims for ground-based technology including product and method claims. As far as possible these claims should set out only the steps performed on the earth-side, to avoid having to rely on partial infringement of the claims

When it comes to filing strategy, careful consideration should be given to which jurisdictions to seek patent protection in, to maximize the options for its enforcement. A filing strategy will pay in the long run. It is important to consider where infringing spacecraft and its components are manufactured. Semiconductors and software play a critical role in space technology; hence this area needs special attention.  Evidently, applications in this area must be filed in countries like Taiwan, South Korea, Japan and USA.

Patent applicants can consider prioritizing patent application filings in the following order: (1) file patent applications in spacefaring countries because of the ability to use these countries as a launching State; (2) file patent applications in technologically advanced countries and countries in ideal launch locations because of the potential ability to use these countries as a launching States; and (3) file patent applications in developing countries and countries outside ideal launch locations.

Consideration should be given to where an infringing spacecraft might be launched from, to maximize options for enforcing the patent against the spacecraft before it is launched. At present, the most active commercial spaceports are in the US (SpaceX, ULA and others), India (Sriharikota), China (CALT), Kazakhstan (Roscosmos), and French Guiana (Arianespace) – a department of France (and therefore covered by patents having effect in France). However, it is anticipated that new players in the space launch facilities market will make available launches from other countries around the world, particularly for servicing the small payload market. Perhaps closest to market is Electron, operating from New Zealand, but there are plans for Spaceports in several European countries where it is anticipated that Andaya Space (Norway), Esrange Space Centre (Sweden) and Spaceport Cornwall (UK) will provide satellite launch services within the next few years.

It may also be possible to enforce patents against spacecraft in orbit, according to the state in which they are registered (although a difficult area). Therefore, consideration should be given to where any potentially infringing spacecraft may be registered once it is operational, which is usually the state where the owner and/or operator of the spacecraft is based.

The costs involved in filing patent applications in multiple jurisdictions may be high, but these would be a micro percentage of costs of launch vehicle and satellites. For long-term gains, patent applications should be filed in all possible jurisdictions.

 

COP 29 signals arrival of nuclear fusion on earth

© R Saha The recent recommendation in the COP29 of providing funds up to $ 300 billion from 2035 to developing countries to mitigate the negative effects of climate change, has caused tremendous disappointment among them including India. Dependence on developed countries does not seem to be working which is not surprising. There are no free lunches. Developing nations who would access the finances would have to pay for technologies necessary for fighting climate change. The cost involved in acquiring technologies may be high and its implementation may further add to the cost. We do not even know if those technologies which are in realm of hypothesis, would lead to benefits, we expect to accrue from the use of such technologies. We need to think out of the box to utilize our knowledge to its limit. Replicating natural processes occurring in the outer space on the earth seems to open new sources of energy. Come to think of it, these processes have managed to ensure a sustainable and long-lasting solar system. Sun is at the centre stage supplying energy to all its constituents. None of the life forms is possible in the absence of sun. The most understood process is the nuclear fusion occurring on sun responsible for almost infinite source of energy. Production of nuclear fusion is almost like creating a star on the earth. Startups across many countries, predominantly in USA, are actively engaged in producing nuclear fusion on earth and few success stories have been coming for the last two and half years. Lot of private funding is pouring into the activities of these startups. An estimate by the Fusion Industry Association, funds to the tune of $ 7 billion have been pumped in so far. The startups have strong portfolio of patents and other intellectual property rights which may become very expensive to access for anyone needing to use such patents. The risk of having to pay high cost towards acquiring technology can be reduced by timely action today through collaboration, cooperation and sharing of costs. How many of the startups will merge with bigger industries or grow to a large size is a matter of speculation at this stage. A close look at these start-ups may reap fruits in future. The pace at which things are happening demands quick action by us. Geopolitics around nuclear fusion is growing fast and becoming interesting. Several countries which do not have their own nuclear programme like India, are entering this arena to be on the frontline to utilize the technology. Given the expertise of India in harnessing and utilizing nuclear energy (through fission route), she can become a leader in propelling geopolitics. Is it possible that $300 billion may be adequate for setting up nuclear fusion plants, experimental or full scale, which the developed world is aiming at? Supply of raw material like isotopes of hydrogen, high temperature metals and alloys will become critical as it would be controlled by few countries. We can see a similar scenario in case of EV technology. India should seriously raise its efforts from the present level and upscale its expertise to produce nuclear fusion as a source of common source of energy in the next few decades. It requires heavy investment, a few notches higher than what we have made in nuclear fusion programme so far. While the government may supply the initial funding to lay the foundation, it is the private sector which will have to take the baton to reach the level of commercial exploitation of nuclear fusion. The government has to set up a positive policy framework for attracting private players to invest; these players may be from India and elsewhere. If necessary, a new legal framework may also be established as has been done in some countries. The immediate step is to have a fund of funds to invest in research and development to achieve nuclear fusion on earth. A different and specialized workforce of engineers are required to manage the challenges for producing nuclear fusion. The available skill set may not be adequate. In the present scenario, India should explore joining several bilateral and multilateral arrangements other than ITER across continents. India is already a member of ITER, which is among the best multilateral cooperations. Commercial production of energy from nuclear fusion on the earth may become a reality by 2047 when we hope to become a leader in the world economy. A long-term action plan needs to be prepared covering all possible dimensions of producing nuclear fusion and supply energy to house holds and industries.

Protecting IPR in Outer Space - A Legal and Technological challenge

The initial spirit of exploring outer space starting with the first space flight by Sputnik in October 1957 got metamorphosed into more extensive exploration of outer space and terrestrial bodies, research activities and sensing of commercial interests over years. The insatiable and unending human spirit to know the unknown and the advancement in science and technology have been the main drivers. Telecommunication and navigation have established an undisputed position in outer space for commercial and strategic interests and now space tourism, the utilizing materials of terrestrial bodies and collaborative research in space stations have added new dimensions.

All space activities whether exploratory or commercial, undertaken by nations and companies are presently governed by two international treaties namely, the Outer Space Treaty of 1967 and the Moon Treaty of 1979 which have their origin in the Cold War Period. The central theme was to allow and regulate peaceful use of outer space and terrestrial bodies without claiming any ownership of any resources, appropriation of any part of space and undertaking military or military like activities. The Moon Treaty has, in effect, forbidden states to conduct commercial mining on planets and asteroids until there is an international regime for such exploitation. Protection of IPR is not an element of these treaties as commercial activities were not visualized at that time.

Several countries including India, are studying promulgation of a legal framework to allow private entrepreneurs to undertake space activities as also how IPR could be protected in the outer space. The draft Space Activities Bill 2017 proposed by ISRO carries a section on IPR. USA provides for protection of inventions in outer space in 35 USC 105 enacted in 1998. USA has recently shared its vision in the Atlantic Council to overhaul these treaties for facilitating space activities for commercial purposes. It is expected that investments and other efforts towards undertaking commercial activities in outer space would grow in coming days.  If no IPR protection is provided, why would any company invest resources and time in undertaking any outer space  activity? If no company comes forward, space resources such as Helium 3 cannot be utilized for the benefit of human race.

Are patents being issued for inventions useful in exploring outer space and exploiting the same for satellite telecommunication and navigation? The answer is yes; one of the first few patents was issued in USA in 1961. Since then, few thousand patents have been granted (based on my searches). How many of these are enforceable in outer space is a million-dollar question? It is a complex subject involving orbit selection, orbital dynamics, satellite designs and their control in invisible physical space. Apparently, orbits themselves are not patented but systems incorporating technological solutions, special materials, electronics etc. for telecommunication are the subject matter of patents. The Molniya orbit originally designed by Russians is one such orbit used frequently by the aerospace community as this orbit maximizes the time satellites can spend over the northern hemisphere.

IPR concerning outer space would primarily be the outcome of research carried out on Earth and research conducted in outer space and on celestial bodies. The former is easy to handle as it is governed by the existing IPR laws in each country. Territoriality and sovereignty are at the centre of all existing IPR laws. There is no globally accepted definition of the starting point of outer space. However, many aerospace enthusiasts consider the Karman Line, which is 100 km above the sea level, as the beginning of outer space. The present jurisdiction of countries for civil aviation activities is only up to a few kilometres above the Earth. Outer space is thus beyond and outside the territory of any country, and any sort of appropriation is not legally possible and sustainable.  Hence, applicability of IPR laws practised on Earth to outer space is froth with legal and technological challenges.

The question of jurisdiction in outer space is not easy to answer. What could be the legal grounds for ascertaining jurisdiction, which transcends the boundaries of IPR laws?

Let us look at the following situation. Consider a company A which lands on moon, collects soil samples or some other material and then files a patent based on these raw materials in a country on Earth. Can a patent be granted under the existing international space laws / treaties? How would such IPR be enforced both in outer space and on the Earth? The first question would be why not? The second would be no and the third could be yes provided the patent immediately after grant, is placed in the public domain for its use by others without the risk of infringement. The third choice may perhaps, satisfy the broader goals of two treaties mentioned above.

There are plenty of questions and few are being raised here. Can inventions made and patented on Earth be used by others in space freely without the risk of infringement? How do you apply the criterion of inventiveness and non-obviousness in respect of inventions made in space? Non obviousness demands that the invention should not be obvious to a person skilled in the art. It would be difficult to find such a person as the environment of experiment in space may not be created on the Earth. Similarly, the requirement of enablement and adequate disclosure may be difficult to meet as it would require undue and expensive experiments to work an invention backwards.

One can carry out different types of scientific research in space, especially taking advantage of zero gravity or weightlessness as there is no human effort in creating the environment. Do the research results under this circumstance qualify for a patent? Whether the application of IP laws to outer space activities is a breach of the State’s obligations under the treaties? Many more questions other than the above need to be answered for expanding the commercial (and strategic) use of outer space and terrestrial bodies. Collaborative research in International Space Station may provide partial answers to some questions.

Infringement, of patents and other IPR granted on Earth, in outer space is a serious matter for companies to guard against. Can an amicable solution be found through novel licensing arrangements which are applicable in outer space?

IPR issues will start multiplying after a few years when commercial activities grow in numbers. One can sense emergence of litigations. Do we need an extension of the existing IPR laws to outer space or design a new legal framework for IPR protection in outer space? Should a common legal system be developed for IPR protection on Earth and outer space simultaneously? The world faces a grand challenge!!!    

 #outerspaceIPR  #spaceorbit #karmanline #molniyaorbit

© R Saha

Previous : Compulsory licensing of patents related to Covid 19 vaccine

Compulsory licensing of patents related to Covid 19 vaccine

Of late, there has been a big clamour about transfer of vaccine technology including compulsory licensing of the Indian vaccines, to other companies in India. One can see intense debates on TV channels, social media and even in courts on this topic. Some commentators, analysts, political parties and intellectuals are spending a lot of time in demanding that provision of compulsory licensing under the Indian Patent Act should invoked for technology transfer. The Supreme Court also raised a similar viewpoint in terms of invoking Section 92 and Section 100 of the Patent Act while discussing availability of vaccines in India. 

As per Section 84 of the Act, a compulsory license can be awarded only in respect of a granted patent and that too, three years after the grant of the patent, on a specific request by a company desirous of taking up the manufacturing of the granted patent. The company requesting for compulsory license will have to establish its strength and capability to manufacture the vaccine. If there is no such request, the Patent Office cannot, suo-motu, take up awarding a license. However, Section 92 which is a kind of extension of Section 84, empowers the government to issue a notification for compulsory license in respect of a patent and interested parties may apply for a compulsory license; other conditions remain the same. There are other conditions as well which will have to be satisfied. The government can invoke Section 100 in respect of a filed application or a granted patent by which it may use the invention for its purpose without going through the compulsory license route. 

Let us do a reality check on granted patents related to Covid-19 in India and examine the applicability of compulsory licensing. There are four major foreign companies, whose inventions have been converted into products in the form of vaccines, are manufacturing in large numbers now. These companies are Moderna, Johnson and Johnson, BioNTech and Oxford Innovation Centre. The BioNTech vaccine is being majorly produced by Pfizer and the Oxford one by Astra Zeneca. Moderna does not have any patents granted in India, in fact it has not filed any patent application so far. 

BioNTech, whose invention has been used by Pfizer, has filed 49 patents applications in India since 2010 and has been awarded only two patents. One patent is “RNA Vaccine” which was granted in 2017. It is not clear if this patent covers the mRNA vaccine or not. This may be a candidate for compulsory license during this year and beyond. However, its capability to combat Corona virus will need to be established by competent people. Similarly, J&J also does not have any granted patent in India. 

Oxford Innovation Centre which owns the invention for the vaccine being produced by Astra Zeneca and the Serum Institute, does not have a patent granted in India. In fact, it filed a patent application in February 2021. The Serum Institute is bound by its agreement with Astra Zeneca and perhaps, Oxford Innovation as well and may not be free to sub-license the technology. Covaxin is based on ICMR’s inventive work for which no patent application has been filed. As the basic technology (lab level) has come out of a government institution, it may not be necessary to invoke compulsory licensing or Section 100. 

For transferring this technology, it would be essential to assess transferee’s capability and manufacturing strength for producing the vaccine and its readiness to obtain regulatory approvals such as GMP. In addition, the transferee will have to have BSL 3 facility and pool of qualified and trained human resources. There is no application for compulsory licensing reported to be pending in this regard with the Indian Patent Office. We must also reckon at the same time, that a granted patent such as the one granted to BioNTech may not be sufficient to manufacture the vaccine as manufacturing will depend on many other essential inputs like patents, know-how, trade secret etc. Therefore, the whole debate about compulsory licensing is without substance and should be kept at bay. 

© R Saha

Next: Protecting IPR in Outer Space - A Legal and Technological challenge

Previous : IPR Waiver and Covid 19 vaccine

IPR Waiver and Covid 19 vaccine

It all started with India and South Africa submitting a proposal to WTO in October 2020 on IPR waiver in respect of Covid 19 vaccines. Interestingly, the proposal included waiver on patents, copyrights, designs and trade secrets associated with Covid vaccines. Initially, the proposal was not supported by the developed countries including EU, Japan, USA and UK which disagreed to even discuss the proposal. Some European parliamentarians did recommend to EU to support this proposal after a few months. 

Many other countries are now standing in support of this proposal. Most recently, USA decided to discuss this proposal in WTO. The US posture may be to gain a humanitarian image as it is not clear whether it will support the proposal or discuss it. It may be noted that many US companies are up-in arm against the current US stand and hence, the final US stand in WTO is debatable at this stage. The other countries EU, Japan and UK do not support the proposal even now. 

There is a weakness in the proposal that it is not practical to implement. Each country making use of the proposed waiver, especially developing countries, will find it difficult to manufacture vaccines without the active support of companies owning patents, trade secrets and know how. Patents in respect of all the vaccines in market are not yet granted anywhere and so was the case in October 2020. 

What waiver are we talking about? Perhaps, the thought may have been that the patents, whenever granted, should be waived so that any WTO member could use such patents for manufacturing the concerned vaccines without any risk of infringement. By the time WTO takes up this proposal for discussion, it is going to be few months from now. People familiar with WTO processes realize that any decision on a proposal may take some time, may be few months if all the members agree, as the decision making is through consensus and not through majority voting. We are already in May 2021, 7 months have elapsed since October 2020 and meaningful discussions on the proposal have not really taken place. The original proposal is likely to be modified before serious discussions start. Some indications are already visible. Each government has to further ratify the decision of the WTO to be inline with the local laws. This means more time for starting manufacturing vaccines. 

Technology experts know that a single or even few patents cannot lead to successful manufacturing unless other associated elements are in place. These elements are know-how, trade secrets, raw materials, manufacturing infrastructure, human resources, robust supply chain for raw materials and components like vials etc. Here is a big catch which WTO may not be able to address because most of these essentialities are not within the purview of WTO. 

The codified IPR like patents are in public domain and can be accessed by anyone for information. Such IPRs may be easier to handle through an amendment in TRIPS but it will be difficult, may be impossible, to regulate know-how and trade secrets because these are not in public domain and not accessible to public. Unless the companies holding know how, trade secrets and patents agree to license know how and trade secrets, there is no way for anyone to manufacture vaccines in a short time of few months or years just by obtaining the right to use such patents. Further, there are only a few vaccine manufacturing units in the world, especially in developing countries, hence rightly qualified human resources would be in short supply which are essential for ensuring quality of vaccine. 

In addition to approvals by the drug regulator, certificates for Good Clinical Practice (GCP) and Good Manufacturing Practice (GMP) would be required. Therefore, process of obtaining such approvals would be time consuming. The most practical approach on the global front would be to encourage licensing of IPR and total technology from the owners of IPR on terms and conditions which may be applied uniformly across countries. This may be easier said than done because details of licensing agreements would depend on local laws concerning licensing and negotiations between parties. 

Private companies will need to be compensated by somebody. The licensing agreements should include transfer of know-how, licensing of patents copyrights and trade secrets, convenient place for jurisdiction, supply chain etc. One can think in terms of uniform royalty rates and down payments which may be kept as low as possible low. Consideration, cooperation and collaboration (3C) would be essential for a way forward.

  

© R Saha

Next : Compulsory licensing of patents related to Covid 19 vaccine

Previous : The Indian patent law nurtures and promotes innovation

The Indian patent law nurtures and promotes innovation

The evolution of patent system in India is not a natural choice of independent India unlike the drive towards investing in research and development, import substitution, indigenous development of know-how and adaptation of technology. India has had its patent law since 1856 and continues to have it after independence with due amendments from time to time. Inventions are not necessarily dependent on existence of a patent law, although the patent law is certainly a big contributing factor in promoting inventions which can lead to innovations.

Innovations are inventions plus, and generally understood to be in terms of products or processes which are successful in the market or have the potential to be successful. An invention needs to be followed by many more steps such as scale up, prototyping, testing, characterization, and safety studies to meet regulatory requirements and standards etc. These steps have to be followed by effective manufacturing and marketing to remain competitive.

The Indian patent law is compatible with TRIPS and takes care of essential features of an invention namely novelty, inventiveness and utility. In its philosophy and character, it is no different from patent laws of other countries. The growth in patent filing by Indian residents in the post WTO period is testimony to the fact that inventive activities have grown primarily due to larger awareness and better understanding of ever increasing competition. A study by the author reveals that 16% of MSME drug companies have been filing patent applications in the last ten years.

The Indian law is very sensitive to the inventiveness aspect and therefore has stipulated that some inventions are not patentable in India. The laws of many countries do not spell out such exclusions but do attach importance to inventiveness or non-obviousness. For example, rearrangement of known devices or components not leading to a new effect is not patentable in India. The same concept was followed by the US Supreme Court in deciding the KSR v Teleflex case.

It must be remembered that the patent law has a strong element of public policy as it gives exclusive and monopolistic rights to an individual or a company for exploiting inventions while denying / limiting the remaining population the right to use and practise the invention.

The Section 3(d), perhaps more commonly applied to drugs as it talks of efficacy, is an example of ensuring inventiveness in inventions dealing with drugs and chemicals, and balancing with public policy is achieved in most cases. The law has however, not provided any direction towards interpretation of efficacy and left it to competent authorities like the Patent Office, Intellectual Property Appellate Board and courts. This needs to be looked into as efficacy is linked with scientific and technical aspects and a common rule may not applicable to all cases.

The provisions of compulsory licensing and working of patents are meant to avoid misuse of patents by the patent holder in specific situations. These provisions are, prima facie, not anti- inventions or anti-innovation. A company aspiring to get a patent in India should take into consideration these aspects, because they may affect its business prospects in very specific cases. However, a high degree of judiciousness based on reliable data and analysis of social and market aspects  is called for while arriving at the decision of awarding compulsory license. 

           

The process of patent granting in India takes a little longer and that has been a cause of concern for inventors and companies, especially MSME. Whether the law should stipulate stricter timelines is a matter for consideration by the competent authority. This is an operational aspect and does not in any way affect the intrinsic character of the law. Like any other patent law, the Indian patent law promotes and nurtures inventions; there is no evidence to conclude otherwise. If the level of inventive activities which the patent system protects, has not grown in the manner expected by us, the answers may lie elsewhere.

(This article appeared in Express Pharma, November 1-15, 2012 under the title "Law has a strong element of public policy")

© R Saha

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