Pages from history: Ambassador Sen’s contributions to the debate on India’s new patent law in the year 2005

Continuing from my earlier post on the letter written by the Indian Ambassador to Geneva, here are two more documents forwarded to the Prime Minister’s Office (PMO) and the Cabinet Secretariat by Mr. Ronen Sen, the then Indian Ambassador to the U.S. who is famous for his infamous comment on the ‘headless chickens’. Although both Ambassadors are members of the same elite cadre i.e. the Indian Foreign Service (IFS) they have offered diametrically opposing views on the nature of the amendments being proposed to Indian patent law in the year 2005.

Unlike Ambassador Puri who had written directly to the DIPP, Ambassador Sen routed his recommendations through the Cabinet Secretariat, the Prime Minister’s Office (PMO) and the Deputy Chairperson of the Planning Commission – Mr. Montek Singh Ahluwalia.

The first document, which is available over here, is a brief 2 page note and does note bear the name of its author. However on the second page of the note there is a sentence stating that the note was left for the Cabinet Secretary by Ambassador Ronen Sen. The document titled ‘IP Protection: Priority Issues’ was then forwarded by the Cabinet Secretariat to the Department of Commerce, which handles trade talks, and the DIPP which at the time was in charge of putting together the amendments to the Indian Patent Act.  

The two page note made a few recommendations which echoed the long-time concerns of the U.S. industry. Apart from stating the obvious i.e. the deletion of the Section 5 bar against patents for medicines and foodstuffs, the document made some other very controversial recommendations such as (i) enabling ‘second use’ patents (ii) either eliminating ‘reasonable price’ as the trigger for a compulsory licence or at the very least providing a clarification to the meaning of ‘reasonable price’ (iii) tightening the entire CL process (iv) a data exclusivity regime for agro-chemicals and pharmaceuticals and (v) doing away with a pre-grant opposition mechanism in favour of a post-grant opposition mechanism as the pre-grant opposition was causing significant delays in the grant of patents.

The DIPP for its part replied to each of these recommendations with frank and candid answers. In pertinent part it opposed ‘second use’ patents as it was a form of ‘ever-greening’ and beyond India’s TRIP’s requirements. On compulsory licensing the DIPP pointed out the Doha Declaration and how a Joint Parliamentary Committee had reviewed all the provisions on CL and concluded by stating that the DIPP was not making any changes to these provisions. With respect to the opposition mechanisms the DIPP once again made it very clear that it was retaining the pre-grant opposition mechanism along with introducing a post-grant opposition mechanism. It also clarified that the Department would introduce time-lines to streamline the process.

The Trade Policy Division of the Department of Commerce also replied to the Cabinet Secretariat on the specific point of ‘data exclusivity’. It informed the Cabinet that an inter-ministerial committee had been constituted by the Government to look into the question of India’s obligations under Article 39.3 of TRIPs and that the report of the Committee was awaited. This Committee finally submitted its report in 2007.

The second document, which is available over here, was a communication forwarded to the DIPP by the Prime Minister’s Office. It contained extracts of a note from Mr. Ahluwalia, who in turn had quoted Ambassador Sen’s concerns on the TRIPs compatibility of certain provisions of the Patent Act which could be interpreted to state that only the manufacture of a patented product on Indian soil, and not importation of the patented product into India, would be counted as working of a patent on Indian soil. 

As our readers must already know there is a provision in Section 83 and Section 84 of the Patents Act, which allows for a compulsory licence to be granted in case the patent is not worked on Indian territory. Brazil had a similar provision in its law and the United Stated Trade Representative (USTR) had threatened to take Brazil to the WTO DSB until Brazil pointed out to the U.S. that it had a similar provision in one of its own domestic legislations.

Coming back to the specifics of the second note, the DIPP replied to the PMO with a note pointing out that India had fulfilled its obligations by incorporating Article 28 into Section 48 of the Patent Act which provided the patentee with the right to prohibit the import of any product violating the patent rights under Section 48. The note also goes into the JPC recommendations and other reasons for the provisions which allowed for the grant of a CL in cases where the patentee was not working the patent on Indian soil. The note was not exactly clear on the issue of TRIPs compatibility of ‘working of patents’ but then again you can’t really fault the DIPP on this point because this is a particularly tricky question.

Conclusion: All the issues raised by Ambassador Sen reflect the concerns of the American industry. Was it right or wrong? Well as an Ambassador I think he was only doing his duty in keeping open the lines of communication between India and the U.S.