Have you ever watched episodes of the show ‘The Big Bang Theory’ wherein Sheldon, Leonard and Howard were contracted to devise a solution for the military? Such scenarios occur on a daily basis. The military, through its Defence Research and Development Organisation (hereinafter ‘DRDO’) contract or sub-contract researchers to innovate for and comply with their set standards and requirements. The result of these agreements are technological advancements that benefit the Defence Research and Development Organisation and thereby benefit the country through its military. However, a lot of research conducted by the DRDO is rightfully confidential due to the sensitivity of its content. Moreover, the technology developed to aid the DRDO and military would most certainly be patented or protected from the industrial and commercial sectors of the country. While this issue may have genuine concern to back up the action taken by the government so as to prevent leakage or spread of data regarding such innovations, a void is created by the lack of such technology in the relevant industries. If the government were to suddenly develop a fighter jet that was self-sustainable or if they were to develop an automated vehicle that was independent of human interaction, there would certainly be a lack of such innovation in the aviation and automobile industry, unless the initial innovators were from the industries themselves.
While various inventions must be protected, it is imperative to note that the DRDO is permitted to release information regarding the same to the public to ensure the development of various industries alongside the current defence mechanisms. One may wonder, why would such information ever be provided to organisations or corporations that operate on an international scale? Who can we trust and not trust with the relevant information? Would it be in the safest interest of the country to release confidential data that could potentially reach the hands of an enemy? The answers to these questions have been answered time and again by the DRDO through its decision to diligently release its patents into the realm of the public. The DRDO conducted its due diligence and researched deeply into the consequences of releasing such information to the public. After noticing the clear upside to certain sectors and industries, decisions were made to provide the relevant stakeholders with information that would redefine technology and would rapidly increase commercialisation of the same.
Patents are granted to inventors to provide them with certain monopolistic advantages in industries but when the inventor or patent holder is the government themselves, it is only fair for them to give back to society at large if the invention is deemed fit to have an overall economic benefit. This article aims to identify the methods through which industries can approach the DRDO regarding release of such patents to the public and further aims to outline previous releasing of patents by the DRDO to further the cause of commercial exploitation by industries in the country.
DRDO Patents: Efforts & Procedure
To provide a helping hand to the indigenous creators in India, the DRDO revealed its royalty-free and zero-fee licence access to its 400+ patents. In order to give a boost to the ‘Make in India’ campaign, this initiative grants free access to DRDO’s proprietary technology to local producers free of cost (no licencing fee or royalty fee).[i]
In its own words, the DRDO claims to have a strong R&D culture and excellent technical expertise which in turn leads to the development of technology in several domains of science and technology. Furthermore, DRDO claims that a strong IPR culture interwoven into its scientific/technical workforce’s R&D activities to be a prerequisite for the realisation of its mission to provide Defence Services with state-of-the-art sensors, arms, platforms and allied equipment. One of the corner stones of its necessary strategy for sustaining technological competitiveness and leadership is its strong emphasis on creativity, innovation and IP generation. However, the DRDO has also identified an issue of concern in the form of a level of disconnect between IP creators and IP users. The solution proposed by the DRDO to solve such crisis is the unique policy initiative, namely, ‘Procedure for Use of DRDO Patents by Indian Industry’,[ii] which aims to provide a platform to increase synergy between the Indian industry and the DRDO themselves. The zero-cost availability of DRDO-developed patents to the Indian industry gives it an opportunity to produce products indigenously.[iii] The link between DRDO’s scientific community and the Indian industry will also be strengthened and deepened, leading to the cross-fertilisation of innovations, entrepreneurship and IP-driven goods. It is evident that the objective of the DRDO is to improve the Indian industry in general, and the defence industry in particular, through free access to DRDO-owned Indian patents.
The DRDO follows a well-established methodology for parties to submit their patent applications. First, a general non-refundable processing fee of Rs. 1000/- is charged. Thereafter, a license is initially provided for a period of one year based on the manufacturing capacity, quality procedure and other terms and conditions of the agreement. It is imperative to note that not more than five licenses can be provided to a party at a single point in time. The licensee is then required, inter alia, to submit details regarding the commercial success and working of such licensed patent which is to be done annually. This process needs to be followed diligently so as to allow the DRDO to report such information to the Office of the Controller General of Patents, Design and Trademarks as is mandated by the Indian patent laws and rules. The license to such patents is renewable free of extra cost on a yearly basis. With regards to the selection of an applicant for patent licensing, there are certain criteria that need to be met. It is necessary for the applicant to be an Indian company, start-up or MSME incorporated as per government guidelines. Furthermore, the Ministry of Defence/Service Headquarters or any government agency or entity should not have suspended or banned business transactions with applicant entities. The applicant must be a manufacturing entity or system integrator and not a trading firm. The company should have enough capacity to handle the technology resulting from the licensing of patents. None of the claimant entity’s promoters and directors should be wilful defaulters. Thereafter, the applicants are required to attach all necessary self-authenticated documents. A screening committee comprising of its Chairman, the Director of Extramural Research and Intellectual Property Rights and other members go through the application and then a decision is taken by the former after having received recommendations from the latter.[iv]
Thereafter, the DRDO and the Licensee are entitled to certain rights which are as follows. Licensees shall be given a non-exclusive licence and the licensee shall be entitled to use, develop or sell the products/processes protected by the licenced patent. DRDO shall only grant the licensee access to the patents issued by DRDO for use, selling and manufacture in India. The licensee is responsible for the approved patents’ commercial operability/viability. The licensee shall be liable for all expenses, costs, penalties, injuries or other effects of product liability resulting from the use, manufacture or sale of products/processes. A patent licence shall be issued on a non-exclusive basis with DRDO maintaining ownership rights, including unlimited licencing rights, for additional parties to the licenced patents. DRDO is solely responsible for the title and copyright of the issued patents and the products/processes protected by them, including variations. DRDO shall not be liable for any losses, costs, penalties, injuries or any other effects of product liability resulting from the use, manufacture or sale of the products/processes protected by the licenced patent.[v]
DRDO Patents: Legal Battles
On a national scale, the initiative was rolled out in September of 2019 and thereby currently does not have any legal disputes arising out of the same. The Patents Act of 1970,[vi] the sole legislation on patents, does not contain any information regarding the initiative taken up by the DRDO. Concerns regarding the same can only be addressed after the significant implementation of the initiative but general concerns regarding selection of applicants, abuse of power or appeal of decisions could be battled out in court. A certain issue of concern is the breach of the agreement by either party as there would still be several terms and conditions that could possibly be left confidential and yet must be complied with.
On an international scale, as per Article 30 of The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) which reads as the following – “Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.”. The DRDO seems to be able to provide for commercial exploitation of patents and thereby fulfil the needs of the country’s economy.[vii]
With respect to the impact of the DRDO’s efforts, it is necessary to note that over 450 patents are accessible to the general public and can be exploited commercially. This can only lead to further innovation and better development between the DRDO and the IP creators of certain industries. The establishment of such an initiative could lead to possible disruption in industries that require patents to be provided by the government free of cost. This also appeals economically as it does not bar a person from applying due to financial constraints. While there may be certain disputes that could arise due to the rights granted to both the DRDO and the licensees of DRDO patents, the policy initiative aims to provide a positive impact to the country’s economy. Lastly, it must be noted that there is no legal document governing the policy initiative and can only be looked at after the implementation of the same. The results of the current policy will indicate whether the government and the industries of the country should interact with each other after the licensing of patents.
[i] S.S Rana & Co., DRDO Allows Free Patent Access, Mondaq (Dec. 18, 2019), https://www.mondaq.com/india/patent/876804/drdo-allows-free-patent-access.
[ii] Directorate of ER & IPR, Procedure for Use of DRDO Patents by Indian Industry, Defence Research and Development Organisation (Sep. 30, 2019), https://www.mondaq.com/india/patent/876804/drdo-allows-free-patent-access.
[iv] Supra note 2.
[v] Supra note 2.
[vii] The Agreement on Trade-Related Aspects of Intellectual Property Rights Art. 30.
Authored and contributed by Vivek Basanagoudar, Intern, Patent Department
This post is brought you by the Patent Department at BananaIP