Form 17 — Application for a Compulsory Licence
Form 17 asks the Controller to grant a licence under someone else's patent without the patentee's agreement.
What Form 17 is for
Indian patent law does not treat a patent as an unqualified private right. Section 83 states general principles: patents are granted to encourage invention and to ensure inventions are worked in India on a commercial scale, and they are not granted merely to enable patentees to enjoy a monopoly over importation. Compulsory licensing is the mechanism that gives those principles teeth, and Form 17 is the application that starts it.
The main route is Section 84. Any person interested may apply on the grounds that the reasonable requirements of the public with respect to the patented invention have not been satisfied, that the patented invention is not available to the public at a reasonably affordable price, or that the patented invention is not worked in the territory of India. The form also serves related routes: licensing of related patents under Section 91, compulsory licences on a notification by the Central Government under Section 92, and the export route for patented pharmaceutical products under Section 92A.
The proceeding is contested and evidence-heavy. Rule 96 governs the application. The Controller considers whether a prima facie case is made out, and if it is, the patentee is notified and may oppose. If a licence is granted, the Controller settles its terms, including royalty, and Section 90 lists the matters to be secured. Because the Rules change, download the current Form 17 from the Indian Patent Office and check Rule 96 as it now stands.
Who files it, and when
Any person interested may apply under Section 84, and that has been read broadly enough to include a manufacturer able to work the invention, an importer, a body representing users, and in appropriate cases the holder of an existing licence. Under Section 91 the applicant is the patentee of a related patent seeking a licence under the other. Under Section 92 the process follows a Central Government notification, and under Section 92A the applicant is an exporter seeking to supply a country with insufficient manufacturing capacity.
An application under Section 84 may be made at any time after three years from the date of the grant of the patent. That three-year period is measured from grant, not from filing and not from publication. The routes under Sections 92 and 92A operate on their own basis, tied to a Government notification or to the export situation the section addresses, and the Act treats them differently from the ordinary three-year rule. An application made too early under Section 84 will not be entertained, so the grant date has to be confirmed before filing.
How it is filed
- Confirm the grant date and check that the period Section 84 requires has passed, where that route is being used.
- Identify the ground relied on and gather the evidence that supports it, such as pricing data, supply data or evidence of unmet demand in India.
- Show what efforts were made to obtain a licence from the patentee on reasonable terms, since the Act treats that as relevant.
- Set out the applicant's ability to work the invention, including capacity, capability and the capital available.
- Complete the current Form 17 with the grounds, the facts and the terms proposed, and pay the fee prescribed in the First Schedule.
- File it with the supporting evidence, and be ready for the prima facie stage.
- Participate in the opposition and hearing stages if the patentee opposes, and address the terms the Controller must settle.
What the form asks for
- The patent number, the name of the patentee and the date of grant.
- The nature of the applicant's interest and its ability to work the invention in India.
- The ground or grounds relied on, framed against the statutory tests.
- Facts and evidence supporting the ground, such as market demand, availability, pricing or working data.
- An account of the attempts made to obtain a licence from the patentee on reasonable terms and the response received.
- The terms the applicant proposes for the licence, including the royalty offered.
Described in general terms. Form contents are prescribed in the Second Schedule and change — download the current version from the Patent Office rather than working from any summary, including this one.
Common mistakes with Form 17
- Applying under Section 84 before three years have passed from the date of grant.
- Pleading a ground without evidence. Assertions about affordability or non-working do not establish anything without data.
- Skipping any attempt to negotiate a licence with the patentee, when the applicant's efforts are part of what the Controller weighs.
- Assuming importation always counts as working, or that it never does. The position depends on the facts and on the statutory principles.
- Confusing the routes. The requirements under Sections 91, 92 and 92A differ from the ordinary route and cannot be mixed together.
What happens if it goes wrong
If no application is made, the patentee's exclusive position continues for the term of the patent regardless of price or supply, subject only to the other checks the Act provides. If an application is made and fails at the prima facie stage, it does not proceed. If a licence is granted, the licensee may work the invention on the settled terms, and the patentee retains ownership and continues to receive royalty. A separate consequence follows further down the line: where a patent has been the subject of a compulsory licence, the Act provides for revocation for non-working after the period Section 85 fixes.
A Vadodara manufacturer seeks a licence on a water treatment patent
This is a simplified illustration. A patent covering a membrane cleaning process is granted to a foreign company, which supplies the Indian market only through imported cartridges in limited quantities. Four years after grant, Narmada Water Systems Pvt Ltd of Vadodara, which operates municipal treatment plants, writes twice to the patentee seeking a licence and offering a royalty. It receives no substantive reply. Narmada then files Form 17 under Section 84, pleading that the reasonable requirements of the public are not being met and that the invention is not worked in India on a commercial scale. It supports the application with municipal tender records showing unmet demand, import data, its own plant capacity and a costed proposal showing it can manufacture locally. The patentee is notified and opposes. The Controller considers whether a prima facie case exists before the matter proceeds to evidence and hearing.
Simplified illustration only. Actual outcomes depend on the facts.
Questions about Form 17
When can a compulsory licence application be made?
Under Section 84, an application may be made at any time after three years from the date of grant of the patent. The period runs from grant rather than from filing, so a patent that took several years to grant is not open to this route until three years after it was actually granted. Other routes work differently: a compulsory licence following a notification by the Central Government under Section 92, and the export route under Section 92A for supplying countries with insufficient manufacturing capacity, operate on their own terms.
What are the grounds for a compulsory licence?
Section 84 sets out three grounds. The first is that the reasonable requirements of the public with respect to the patented invention have not been satisfied. The second is that the patented invention is not available to the public at a reasonably affordable price. The third is that the patented invention is not worked in the territory of India. An applicant may rely on one or more of them, and each has to be established on evidence. The Act elaborates on what counts as the reasonable requirements of the public.
Does the applicant have to approach the patentee first?
The Act treats the applicant's efforts to obtain a licence from the patentee on reasonable terms as relevant to the decision, and in practice an applicant who has made no attempt at all is in a weak position. A documented approach, a reasonable offer and the patentee's response form part of the material the Controller considers. The period the Act contemplates for those efforts, and the way it is applied, depends on the current text and on the circumstances, so the position should be checked before an application is prepared.
What terms does a compulsory licence carry?
The Controller settles the terms, and Section 90 lists matters to be secured, including that the royalty is reasonable having regard to the nature of the invention and the expenditure incurred by the patentee, that the invention is worked to the fullest extent by the licensee and is available at reasonably affordable prices, and that the licence is non-exclusive and not assignable. The patentee remains the owner and continues to receive royalty. A compulsory licence is a licence, not a transfer of the patent.
Considering a compulsory licence application in India?
MYCrave Consultancy & Services explains the statutory grounds and the evidence a Section 84 case is built on.