Venkat: Welcome to the new podcast session, with me is Professor Feroz Ali. Sir, I want to ask you something which I happened to read yesterday, regarding compulsory licenses. Compulsory licenses covers from Section 82 up until section 94 and while going through this section I was listening to your video material and in section 84 is the conventional compulsory licence and interestingly you mentioned that there are various kinds of compulsory licenses possible, so that was something different, which I didn’t come across, it was not at least specified in the sections that I came across, so what are the other kinds of compulsory licenses?

Prof Feroz: Good question Venkat, now this is a typical example of the need for external guidance in preparing for this exam, because these sections 82 to 94 just gives you a list of things that are contained in the law, it does not break up and tell you how things are classified, there is no classification in these sections, it also does not tell you how one is related to the other or which one will precede the other or which one will come before the other. Now if you look at these sections; section 84 talks about the general compulsory licence or the vanilla compulsory licence or the main kind of a compulsory licence, now that is a market initiated licence, it has to be initiated by the market. So we understand a compulsory licence through its trigger, for Section 84, which is the normal compulsory licence the trigger has to be the market. The event that starts the compulsory licence is a person who is in the market, a competitor. The second type of compulsory licence you will find in section 92, which is a special compulsory licence, here the government has to issue a notification saying that there is a National Emergency or an extreme emergency, or for non-commercial use; in all these cases, you will find that the trigger is not the action of a person in the market, in that sense it is not market initiated, rather the trigger is a government notification because of say an epidemic or a dire situation where patent that covers a medicine is required, so this compulsory licence is a special compulsory licence and the trigger is the notification itself issued by the government. Once the notification is issued, then you can have a situation where after the notification is issued the compulsory licence can be applied by an applicant before the Controller, so the first action is the notification issued by the central government, the second action will be an application that is filed by the applicant before the Controller, the Controller of Patents that is the patent office. There is a third type of compulsory licence, which is a licence only for exports. Now 92A deals with a compulsory licence that is granted solely for export; so that it is a special regime, it has not yet been activated, we have not seen any instance of section 92A type of compulsory licence being applied for or granted, so that’s the third type. The fourth type is section 91, compulsory licence of related patents, this is largely a mechanism to cross licence patents, parties have patents and they are not willing to co-operate, licence each other, so one party can approach the patent office requiring a compulsory licence of the other patent, because they are related, the technology is related and you can’t work one without the other, but in this case, 91 is a special category, because in 91 if I ask for a compulsory licence, I should be willing to grant a licence over my patent, which presumes that I am also a patent holder. So this operates as a cross licensing regime, so you have these four categories and as I said this is a classic illustration of the Act not being sufficient for you to understand the various intricacies in the Act.

Venkat: So I have a question with respect to the timeline for the compulsory licenses, at least for the conventional compulsory licenses from section 84 it says at anytime after the expiration of 3 years from the date of the grant of a patent. How about the other 3 cases that you mentioned?

Prof Feroz: That’s a shrewd observation, because the timelines for all these compulsory licenses are different, 84 because it’s a general compulsory licence, it requires this 3 year waiting period, you cannot apply for a compulsory licence before the expiry of 3 years after the grant of the patent, whereas for 92 there is no such requirement, in fact it is mentioned in one of the provisions that the timeline does not apply for 92. In section 92 it’s the government notification that counts, for instance if there is a drug which can cure say a kind of swine flu or a kind of an avian flu, one of those various epidemics that is transmitted through animals to human being and the government feels that this can spread across the country and there is a need to release the drug immediately. Assume that the patentee holds a patent over this drug and the patent has just been granted, it’s been just one year; so this situation is not amenable to a compulsory licence under section 84 wherein an applicant has to wait for 3 years, but because there is a government need and there is the national interest involved in it, The Government may issue a notification and once the notification is issued under 92, you need not wait for the three year period, it is kind of a fast track method of getting a compulsory licence. Similarly for the related patents section 91 there is no timeline and for 92A as well there is no timeline.

Venkat: Another interesting think that I came across in section 84 is that sealing of a patent, which I didn’t come across in any part of the Patents Act.

Prof Feroz: The word sealing existed in The Act before the year 2005, if you look at the title of chapter 8, now the title of chapter 8 is Grant of Patents and Rights conferred thereby. Before 2005, before the amendment kicked in, it was titled, Grant and Sealing of Patent and Rights conferred thereby, when the patent was made ready for a grant there was a step of sealing the patents, now the sealing of the patent has now been removed, so the grant itself now is done and if you look at section 43, which is the first section under chapter 8, there is a reference to the words with the seal of the patent office, so this we understand as the sealing part, so with the seal of the patent office has now replaced the sealing part; however, when this amendment happened there were other places in The Act where the word sealing appeared, they were all removed, but the provision on compulsory licence, which you just pointed out was left, so I would look at this is an oversight by the people who amended the Act and that they left this, but apart from sealing does not have any relevance, now sealing has been replaced by grant.

Venkat: Just a related question to that, so I would like to pick on the grant that you mentioned, so date of a grant, does it refer to the date on which the grant is published or the date on which it is entered in the register of patents or the seal that you mentioned?

Prof Feroz: Okay, date of the grant, is the date on which the patent is the granted, now the granting of the patent has various acts tied to it, one of the act is the fact that the patent office finished and closed the file. There is a case law on this, we can discuss this in greater detail, so one of the act involved is the Controller looking at the file and closing it, that’s one act. The second act, which also relates to the grant is intimating the applicant that it will be granted. The third act would be incorporating the grant in the register, because the entry has to officially get into the register of patents. The fourth act could be where the grant is published, so that the world gets to know it. So all these things, The Patent Act does not classify as different acts, rather it is all treated as part of the same act. So the grant of a patent means, the patent controller closing the file, the patent controller entering it into the register, the patent controller issuing a notice to the applicant saying it has been granted, and it eventually getting published that week. But for the sake of certain provisions of The Act this question has been raised before the court as to when does the actual grant happen, this was in the context of pre-grant and post-grant opposition, there is a separate case law on that, when we get an occasion we can discuss that in detail, but for us to right now understand a patent is granted when it is published, when the grant is published, because that serves as notice to the world.

Venkat: In section 92A, it says that, so in previous sections we saw that the trigger is either, it’s market driven or The Government issues a notification, but here the trigger is the country that is importing the licence, they have to issue a notification right, and also it says that the compulsory licence shall be available for manufacture and export of patented pharmaceutical products, so does it mean that the importing country can manufacturer this patented product, is it the licence, is t part of the licence?

Prof Feroz: No the licence is granted to the manufacturer in India, the company that is going to export from India, it is going to export, in fact the title says, compulsory licence for export, so there is an Indian company which has the ability to manufacture this drug and the licence is given only for manufacture and export, now to understand these two things, you will have to look at section 48. Section 48, generally deals with what are the rights of a patentee and the rights as a compulsory licensee will reflect the rights of a patentee, because a licence is granted in a way in which the licensee can now do what the patentee has been doing. So the patentee under section 48 can make, which is manufacture, can use, can sell, can offer for sale, and can also import; export is not covered. So this section expressly says that you can make, which is one of the rights the patentee has and you can’t do anything else in India, you can make but you cannot use, you cannot sell, you cannot offer for sale, you cannot import; but once you make it, that itself amounts to an act of infringement, because section 48 covers manufacturer that is making, as an act of infringement, so granting a licence the act excludes manufacture with the intent of export from the ambit of an infringement, normally any manufacture amounts to infringement. Now how are you going to demonstrate to a potential owner of a patent that I manufactured, but my intention was different, you cannot simply do that, because once you manufacture a patented drug it will be assumed that you want to sell, you want to market it, you want to make money out of it, so this provision is a provision which will help you to manufacture and export directly without doing any other act. So that is why, this is a special provision, there is an international regime to support this, but it is not taken, I mean this has not been put into practice at all.

Venkat: Okay, but this is an Indian Patent right?

Prof Feroz: Yeah.

Venkat: It is an Indian patent wherein the country is either sending a notification to India, saying that there is a demand for the patented products or patented process and they have a compulsory licence to import and India have the right under such circumstances to export, manufacture and export?

Prof Feroz: Yeah, correct.

Roshan: Sir, does the other country require a compulsory licence, do the government, suppose the Government of Bhutan has to issue a compulsory licence or the Indian Government issues a compulsory licence, and then the generics transfer the meds?

Prof Feroz: It requires two compulsory licenses, if you see the wording of the act, a compulsory licence shall be available for manufacture, which is in India; further down it says provided compulsory licence has been granted by such country, so it talks about to compulsory licenses, so there has to be a compulsory licence in the country where it is going to be imported and there has to be a compulsory licence granted in India for manufacture. You can refer to the second compulsory licence or the subject matter of this provision as the second compulsory licence, because without the first one the Indian Government is not even going to look into it, so there has to be a compulsory licence granted in the country where there is a need. Now not just compulsory licence; provided compulsory licence has been granted by such country or such country has by notification or otherwise “allowed” now this could be a situation where there is no patent or the patent is still pending, it has not been granted, and the country issues a notification. Something similar to Section 92 of the Indian Patents Act. Section 92 allows the Indian Government to issue a notification when there is an emergency. Now a notification could affect a patented drug, a notification could also affect drugs which have not yet been patented, but the patent applications are about to be granted. So if you look at the global practice, notification is normally issued for diseases, it’s not issued for drugs, so they would say all the drugs which would be required for tackling avian flu, so there could be some drugs which are already in the market patented, it could also get hit some drugs which are in the pipeline, the patents are still in the pipeline, they may get granted in the next month to few month or few years, they could also get affected. So notification are normally issued declaring a national emergency or an extreme urgency, the event is described, which could be an epidemic or outbreak of a disease, so the notification is tied to an event. So assume that if that country has not granted a compulsory licence they should be some kind of a notification, which can act as the first step, so the trigger is a CL in another country based on which India would grant a CL. So there are two compulsory licenses here, one in a foreign country and the other one in India.

Roshan: I cannot use this licence to distribute the product within India it’s only for export?

Prof Feroz: Absolutely, you cannot do that. In fact, the only compulsory licence that was granted in India, which of the Nexavar licence, towards the end of the licence, the order of the controller it clearly mentions, this is only for manufacture in India and supply in India, so licenses can be for manufacturer and supply in India, which is a subject matter of Indian Patents. Indian patents do not have any force beyond the borders of this country, but there could be cases where the controller also allows that this could be exported, but if you see the order in Nexavar where a compulsory licence was granted for the drug Nexavar, which was, the patent was held by Bayer, and the licence was granted to NATCO, which is an Indian company. There was an express mention that it should only be manufactured and sold in India. This provision is only for export. It’s the complete opposite of the other licence, in that you could manufacture and only the sell in India; in this case, you can manufacture, you can only export this.

Venkat: Usually it involves either a patentee or a licence holder right? Those are the terms I have heard, but here you are talking about 2 compulsory licenses, one country which is willing to import and the country that is willing to export should also have a compulsory licence, so not able to follow that?

Prof Feroz: Okay, normally you have a patentee, if he gives a licence, the person becomes the licensee, so you have a licensor and a licensee, in this case there is no licensor at all, the licence is granted by the government, that’s why we add the prefix compulsory. The licensor or the patentee was unwilling and the government stepped in and granted the licence. So in this case, the government does not become the licensor, the licensor is still the patentee, because it is his patent that is being licensed, but it is not a voluntary licence, so in common parlance we call it an involuntary licence, so in an involuntary licence the mechanism still remains the same, the patentees invention is now licensed to a licensee unwillingly or a person with whom the patentee does not have a commercial relation, but this relationship was enforced by the government, so that’s why we call it a compulsory licence. In a compulsory licence you don’t have the traditional distinction of licensor-licensee; because this is a licence in which all licenses by definition are given voluntarily, if it’s not given voluntarily, you don’t call it a licence. Licence has an element of free will and choice. In a compulsory licence the regime is different. The patentee does not grant it, the government steps in because of a legal provision, the government grants it and because the government grants it, you would call the person a compulsory licensee but you don’t call the patentee a compulsory licensor, because it was done without his agreement, or he did not voluntarily agree to it, because of the force of the law he had to agree to this. So the distinction between the licensee and licensor-licensee may not strictly apply to this arrangement.

Roshan: Is this compulsory licence an exclusive licence or the licensor can give other licenses out?

Prof Feroz: If you see the last compulsory licence that was granted the Nexavar licence, it acts as an exclusive licence to the extent the terms are binding only on the person who gets the licence, in fact if you read that licence, the patent office, the controller says that you have to manufacture so many units, you have to supply at this price, it only binds NATCO, so you don’t call it an exclusive licensee because exclusive means you can manufacture to the exclusion of the patentee as well, at best you can call it a non-exclusive licence, because when this was happening, when the price was fixed by the order, within a few weeks, Cipla who was also operating in the market, because of a litigation, reduced the price below the price that was fixed by the controller, so the controller fixes price X, Cipla who is also in the market because of a court case it was allowed to manufacture and supply the same drug, it reduced it below this price, so what did it mean, at that point there were three people operating in the market. Bayer, with its original price, the price which a patentee would demand, then NATCO with the fixed price, which NATCO cannot change, so the terms are stuck, NATCO cannot say that Cipla has given a price cut, let me do a further price cut, NATCO by itself cannot do it, it has to bring compulsory licence back to the controller and it has to be amended. So there was a fixed price set by NATCO and a price which Cipla had put on the market, which was lower than NATCO’s price.

Roshan: So Cipla and Bayer had a licensing arrangement?

Prof Feroz: No they didn’t have, Cipla’s ability came from a court case. There was an order not to injunct Cipla, based on that Cipla was in the market. So that was a unique arrangement at that point and if you see in the NATCO case one of the arguments raised by Bayer is that Cipla is already supplying so the demand is met, so that was also one of the arguments in the case.

Roshan: So what portion of the compulsory licensing revenue goes to the original patentee, is there an arrangement between that?

Prof Feroz: Yes, that is what we call the royalty. The royalty is fixed by the controller and whatever royalty is fixed has to be paid by the mechanism agreed in the order by NATCO to the patentee, now one of the distinguishing factors of a compulsory licence because there is no direct know how transfer, in a normal licence the patentee would licence the thing and there would also be some kind of a support and a know how transfer that will happen. In this case, nothing of that nature because it only operates for drugs where the manufacturer can figure out how to come up with the drug and there is no know how transfer in this kind of a licence and the royalty is based not on any effort from the patentee. In a normal licence the patentee will have to negotiate, the patentee will have to give support, documentation and also you know there has to be some kind of an arrangement by which the patentee is going to get royalty. In this case, because the royalty is fixed by the controller, it is paid directly based on the units manufactured.

Venkat: So natural licence is it exclusive or non exclusive licence, the normal licence?

Prof Feroz: The normal licence is what we call a voluntary licence. Voluntary licenses can be exclusive or non exclusive. So when you don’t specifically draft a licence as an exclusive licence and as we just mentioned an exclusive licence can also exclude the patentee, it is deemed to be a non-exclusive licence. So any licence which does not categorize the licensee as an exclusive licensee is understood to be a non-exclusive licence. So the norm in the market, if there is no special words used in the licence, you will understand that as a non-exclusive licence, so if I give you a licence and I don’t call you an exclusive licence and there is no restriction to my right in the licence to give further licenses, you are understood as a non-exclusive licensee.

Venkat: So in the case of compulsory licensing since The Controller or The Government steps in so it becomes an exclusive licence, right?

Prof Feroz: No, we cannot compare the compulsory licensing mechanism to fit somebody into an exclusive or a non-exclusive licence. You may say it is exclusive, because only one party is operating, but nothing stops the patentee from operating, correct; nothing stops another party having another right to coming into the market. So that terminology of exclusive and non-exclusive applies only for voluntary licenses, we will not use the same terminology to understand compulsory licenses, because the regime is different, players are different, roles are different.

Roshan: So once a compulsory licensing has been granted that doesn’t stop the patentee from granting further licenses to any other player, if there are willing players in the market?

Prof Feroz: Yes, it does not, because the reason why a compulsory licence came into being was the fact that the patentee was not willing to grant a licence. So in most cases, as we have seen, after a compulsory licence is issued they will not go back and grant it, because they have to hold fort to what they did right, so they have to look consistent, so the reason the compulsory licence came to be granted was because the patentee didn’t grant one. So, if they didn’t grant in the first instance, most likely they will not go back and grant, because what a compulsory licence does in pure economic terms, it converts a monopoly into a duopoly. A monopoly is where only one person acts in the market, now there are two people; in different price levels with restrictions, but if you need to understand the regime of compulsory licensing, it converts a monopoly into a duopoly, and if there are more people coming in then, it becomes the normal market there.

Roshan: The first compulsory licensing that was granted by India, you said there were 3 players in the market, if the court didn’t injunct Cipla to stop manufacturing, so I understand there is a duopoly already existing in the market, so how NATCO was granted a compulsory licence or why was NATCO granted a compulsory licence?

Prof Feroz: A good question, now the Controller could have said, Cipla is already supplying, what is the need for a licence. Now Cipla was supplying under a contingency, there was a court case, as an interim measure Cipla was allowed and there is no guarantee that that could have continued and because compulsory licence is sought for citing non-availability of drug, non-affordability of drug, and citing an ailment, which can kill hundreds and thousands of people, the arrangement will still be put into force even if there is another player. So far the other player is not a compulsory licensee, then that is what the court did, the court looked at the situation and said, it’s an interim arrangement, but this is a permanent arrangement, once you grant a compulsory licence, it exists till it is revoked or it exists till the life of the patent. So though there was another player, because that was an intern arrangement ordered by the court, which could change anyway, you know you could go on an appeal and change it or the parties can voluntarily settle, what happens to public need? So the object of granting a compulsory licence under 84 is to address a public need and when you are addressing a public need you try to address it in a way in which it does not backfire, so if the Controller had said Cipla is already supplying, no need to apply for a compulsory licence and then for whatever reason, market reasons Cipla just says that you know let’s have a compromise decree and withdraws the suit or an applet court enforces the injunction or for market reasons Cipla feels that this price is not possible and it increases the price or it moves to another market or to another product, various things are there, but compulsory licensing is granted to take care of certain issues in the market and that is why though Cipla was there NATCO was granted a licence.

Mustafa: What is the validity of compulsory licence, how long it is enforced?

Prof Feroz: Like any other licence, the licence will run with the life of the patent, so normally if the term is not stipulated it runs with the life of the patent, so the compulsory licence is tied to the life of the patent itself, in some cases the Controller can say, it’s a contingency it is tied for, he can even set a limit to the time, the controller has the power to do it, if the controller doesn’t do if and it if continues for a long time and the patentee feels that, you know, those conditions are no longer there, the drug is now available, new people have come in or alternatives have come in, then the patentee has to approach the controller to amend the licence. So there is a process by which you can ask, even for a revocation saying that the conditions don’t exist.

Venkat: Once a compulsory licence is in place, can somebody revoke a compulsory licence, if that happens who is that person?

Prof Feroz: There is a process of opposition for compulsory licenses, people can oppose, it need not be the patentee, could be an exclusive licensee, people can oppose a compulsory licence. Once the compulsory licence is granted then there is a process in which you can ask for a revocation, now termination of compulsory licence is covered in 94, if the circumstances that gave rise to the grant no longer exists, then on an application the compulsory licence can be terminated, so the process is governed under section 94.

Venkat: So it’s government directed, right, so nobody else has to ensure this process?

Prof Feroz: No, it can be on an application made by the patentee or any person deriving title or interest, so those are the two categories, who else will be interested, because everybody else gets to benefit by a cheaper price, so the only person who will be interested is a patentee or somebody who’s interest is tied to the parent.

Roshan: Sir, how is 85 different from 94, section 85 talks about how to revocation of patents by the controller?

Prof Feroz: Okay, 85 is different from 94, section 94 talks about how to revoke when the circumstances don’t exist, 85 talks about the inaction of a compulsory licence. A compulsory licence has been granted, so in 85 you should know that a licence has been granted and the licensee, the guy who got the compulsory licence is not doing anything, and it says for 2 years from the date of ordering the grant, the first compulsory licence he did not do anything, so what does it mean, you expected the compulsory licensee to manufacture and supply in the market and there is, the patentee is anyway not doing it, and this has got into a gridlock, it is not moving forward, so this is a special provision where the patentee is not doing anything based on which a CL was granted and the compulsory licensee is also not doing then you can ask for a revocation of the patent. So this is very much different from 94, section 94 is the compulsory licensee either he used the licence and he manufactured things and supplied to the market and the circumstances cease to exist, 85 will kick in, in 2 years if the compulsory licensee did nothing then there is a case for revocation, it is a special revocation, because earlier, historical if you see compulsory licenses were granted as an alternative for revocation, it is much easier for a country to revoke a patent, so the government had the power to revoke, so it was granted as an alternative and that is why some scholars call the compulsory licence a median path, it’s the middle path actually, because what were countries doing before CL, they were revoking patents, which is even worse, so it was the middle path, in the middle path what happens if the middle path is actually not the middle path, you grant a licence and nobody is working it, then final conclusion has to be that, if it is of public importance then that patent has to be revoked, that is what is contained in 85.

Roshan: A question outside The Patents Act, so if a compulsory licence is granted, does the licensee have to go through all the drug, marketing approval process, or is it automatically granted?

Prof Feroz: The person will still have to approach the drug regulatory authority for approval. These two things are different, your ability to get an approval for regulatory purposes is different from getting the right to manufacture an invention covered by a patent, these are two different things. A regulatory approval is something which you can get it, I mean there is no bar in getting a regulatory approval for a drug that is being patented, the bar is in manufacturing the drug that is covered by a patent, it does not flow automatically, but there is no, we don’t find any issues in getting a regulatory approval, especially when the CL is granted.

Venkat: Under normal circumstances barring any emergency or any other incident, why is that a compulsory licence can be initiated only after 3 years of the grant, why that particular number 3?

Prof Feroz: Okay, because the third reason why a compulsory licence can be granted under section 84 is that it is not being commercially worked in India. First thing it is not publicly available, it is not available at an affordable price, it is not commercially worked, locally worked in India. So, 3 years is the time given to the inventor, you can’t say that three years is it right time for all technologies, for all inventions, but 3 year is the time given for the patentee to work his invention; because many a times patents are filed much early in the life of the invention, patents are filed and only then you do further R&D and by the time you reach the market in some cases where drugs are involved it could be 5 or even 7 years since the patent was filed, it takes so much time for the drug to actually reach the market, because of regulatory approvals and other things, so this timeline is actually the time given to the patentee so that he can work it.

Mustafa: Is compulsory licensing only associated with pharmaceutical patents or related to all the patents?

Prof Feroz: If you look at the language of 84, it talks about not available to the public, not available to the public at an affordable price, and it’s not commercially worked and if you read it along with the general principles for granting a compulsory licence in section 83, it would clearly give you an impression that there is a clause, which specifically says “E., patents granted do not in anyway prohibit Central Government in taking measures to protect public health.” So public health is one of the key reasons why compulsory licenses are being granted around the world, they can also be granted for other purposes because in the Indian Act, Section 83E specifically refers to public health, the compulsory licenses that we have seen in India and in other developing country have been on, relating to pharmaceuticals, which affects public health. To answer your question, if you look at “F., That a patent right is not abused the patentee or person deriving title or interest on patent from the patentee,” which means abuse of IP, compulsory licenses could also be granted to check abuse of intellectual property or a person deriving title or interest on a patent from patentee does not resort to practices, which unreasonably restrain trade, so unfair trade practices or adversely affect the international transfer of technology. So it can also be granted for facilitating transfer of technology, so abuse of IP, unfair trade practices, which are covered under competition law, and restriction of transfer of technology. So F will tell you that it can cut across any field of technology, not just pharmaceuticals, but E specifically puts a focus on pharmaceutical. We understand 83 as general guidelines or principles upon which compulsory licenses are granted.

Roshan: As I understand 83F is related to 92A, because in 92A is where it talks about export of technologies?

Prof Feroz: If you want to map, all these principles to provisions of The Patent Act, it’s going to be a difficult thing, because these are general statements, it would be hard for us to take E and say does E map on 84 or does E map onto 92A, that will be a hard thing, but public health and pharmaceutical there is a tie, so you can definitely say 92A comes from this principle, it’s for certain. If you look at 91, which talks about cross licensing related patents, that will encompass all these things, where there is an international transfer of technology or unreasonably restrained trade or and abuse by a patentee, it would factor all these measures, because that is a case where a licensee asks for a licence from a patentee and the patentee refuses to give it and the licensee is not able to implement the technology without infringing the first patent, so to facilitate a cross licence, what happens when a cross licensing is facilitated? In 91 a cross licensing can be facilitated by the government, it amounts to transfer of technology, so it facilitates transfer of technology, there is also one more provision, which clearly indicates that the licensing regime under 84 can kick in for non-pharmaceutical substances, let me just draw your attention to that, if you look at section 84 sub section 6, the proviso to clause 4, so we are looking and section 84 sub section 6 clause 4 proviso, provided that this clause shall not be applicable in case of national emergency or other circumstances of extreme urgency or in case of non-commercial use, which are matters covered under section 92, special compulsory licence, or on establishment of a ground of anti-competitive practice adopted by the patentee. So 84 does not apply for 92 and for, on the ground of anti-competitive practices adopted by a patentee, which tells us apart from 84 you could use the other licenses for remedying anti-competitive practices. Section 91 is a great tool which has not been used, section 91 is a great tool which can be used to remedy anti-competitive practices. So if you have to map F, 83F then 83F can be mapped on Section 91. If you have to map 83E it can be mapped to 92A as well as 84 and 92 as well.

Venkat: So here in the licensing of related patents, it should be between the two competitors, right? Two people who are working in the related field, so why would they go for settling through compulsory licensing rather than one going after the other through the infringement act?

Prof Feroz: That option is still open, because it depends on the bargaining power, it depends on the industry, in some industries we have seen that licensing is the norm of the game, specially in the electronic industry and the telecommunication industry, licensing is the norm, whereas in the pharmaceutical industry, licensing is not the norm, licensing is an exception there the parties or the right holders stand to gain more by not licensing, where as electronic industry or in a telecommunication industry the patentee may stand to gain more by licensing, for instance the CD-ROM was invented by a collaboration, the two companies Sony and Philips had together jointly invented it and it was licence to the world and they got substantial amount of revenue through the licensing the CD-ROM technology, but we know that there are various drugs which are really important, but it is just one company that sells it throughout the world, so the reason for not licensing could be the technology, it could be of the investment the company has made, it could also be the potential market that the company can capture. So if you are in a market and you know for sure that you will never be able to capture everything on your own then maybe you may go into the sharing mode, whereas if you have the ability to capture the entire market on your own then you may not go for a licence, so there are multiple reasons for it, so 91 requires either to be a patentee on your own, you should have your own patents or you should have a licence on others patents, so if I need a licence on 5G technology, there are players in 5G and they have various patents, and I have an invention which I have licensed from somebody else, since I have licensed it from somebody else, I need to work this and create a product or this has to be made as a part of a product, if an existing patent is stopping me from doing that, though I myself am not a patentee, I can enter into an arrangement under 91 provided the person from whom I have taken a licence is also willing to put this into the pool, so it is more like a patent pool or a cross-licensing portfolio.

Venkat: Thank you Professor for you time. I am pretty sure our listeners must have gained a lot in this interaction.