Even after a compulsory licence has been granted under the Patents Act, that licence is not forever immutable. When the circumstances that justified its grant no longer exist, either the patentee or a person with title or interest may apply to terminate it via Form 21 under Section 94. Understanding how and when to file this “Request for Termination of Compulsory Licence” correctly is essential for patentee rights, licensee certainty, and public interest balance.
In this article you will find:
The legal foundation and when termination is possible
Who may file Form 21 and what standing is required
Key contents and drafting guidance for Form 21
Step-by-step procedural flow and decision factors
Strategic considerations, risks and practical tips
Legal Basis & When Termination Is Permissible
Statute: Section 94 & Rule 102
Section 94(1) of the Patents Act, 1970 empowers the Controller to terminate a compulsory licence granted under Section 84 on an application made in Form 21 by the patentee or any person having title or interest in the patent.
Rule 102(1) of the Patents Rules prescribes Form 21 as the format for such application.
In effect, Form 21 is the formal mechanism for ending a compulsory licence when its justification is no longer valid.
Triggering Conditions / Grounds for Termination
Termination is not automatic or routine. The statute requires that:
Circumstances that gave rise to the grant of the licence no longer exist.
For instance: the public demand is now met, the patentee is working the invention satisfactorily, the price is reasonable, or the working gap is closed.They are unlikely to recur.
The Controller must be persuaded that the changed circumstances are stable and durable, not transient fluctuations.
Thus, the termination application must show both (i) factual change and (ii) improbability of reverting to the old situation.
Right to Object: Licensee Safeguard
While the licence may be terminated on application, the holder of the compulsory licence has the right to object. Section 94 mandates that the licence-holder be given an opportunity to present objections before termination is ordered.
Thus, the Controller must balance the patentee’s right to reclaim exclusivity with the licence-holder’s legitimate reliance interest.
Who May File & Standing under Form 21
The patentee can always apply in Form 21 to terminate the licence, since they are the owner of the patent.
Alternatively, any person having title or interest in the patent (for example, successors, assignees, or parties with contractual rights) may also file, provided they can show their relationship to the patent and justify the termination request.
The application must be supported by certified copies of documents establishing that title or interest and the compulsorily-licensed order.
Non-licensees (i.e. third parties with no stake in the patent) ordinarily do not have standing to initiate termination, though they may intervene or object when notice is issued by Controller.
Key Contents & Drafting Guidance for Form 21
The official Form 21 (Request for Termination of Compulsory Licence) is available from the Indian Patent Office.
Below is how to approach each section, with strategic drafting tips:
Section / Item | What to include | Notes & best practices |
Applicant details | Name, address, nationality | If you are not the original patentee, also attach certified documents showing title or interest |
Patent & licence order particulars | Patent number, title, date of grant, and details of the compulsory licence order (date, terms) | Accurately reference the original licence order |
Request & grounds | State the request: termination of the compulsory licence granted under the order. Then list grounds for termination | The grounds must link to changed factual conditions and explain why original basis no longer prevails |
Documentary evidence in support | List and annex certified copies of supporting documents | Title documents, licence order, working data, market evidence, pricing, new working statements |
Address for service in India | Address, telephone/fax etc. | This is required for communications by Controller |
Verification / Signature | Declaration that facts and matters are true to best of knowledge; signed by applicant or authorized agent | Must be consistent with signature norms in other Forms |
Date, place | Usual metadata | Standard practice |
In the grounds section, your narrative should:
Recite what factors justified the compulsory licence initially.
Show that those factors have materially changed - e.g. patentee now meets public demand, price has become affordable, or the invention is being worked satisfactorily.
Provide evidence (financials, market statistics, working statements, Form 27 statements) to demonstrate change.
Argue that there is no likelihood of the conditions reverting.
Your burden is persuasive: you must show that termination will not harm the public interest or licensee unduly.
Procedure After Filing Form 21 & Decision Path
Here is the typical sequence after a well-drafted Form 21 is filed:
Controller’s admissibility check
The Controller first examines whether the form is complete and whether there is at least a prima facie case for termination. If not, it may be rejected.Notice to licence-holder and publication
If admitted, the Controller issues notice on the licence holder (and possibly other interested parties), and publishes the request in the Official Journal, inviting objections.Licence-holder objections / counter-submissions
The holder of the compulsory licence may file objections, evidence, and arguments opposing termination.Hearing and evidence stage
Both parties can submit evidence (affidavits, technical data, market reports) and appear in hearings. Controller may frame issues, request clarifications, or cross-examination.Controller’s decision
The Controller may:Grant termination (in whole or in part) if satisfied that the grounds are met; or
Reject the application, sustaining the compulsory licence order.
The order must deal with the implications for the licence-holder and public interest.
Appeal / Review
If dissatisfied, either party may seek review or judicial challenge (for example, Letters Patent Appeal or High Court review, depending on jurisdiction).Effect of termination order
Once termination is granted, the compulsory licence ceases to have effect (from the date and terms specified in the order). Thereafter, the patent’s exclusivity rights are restored subject to any surviving rights of licensee or transitional obligations.
Throughout, the Controller must weigh the rights of the licence-holder, ensuring they are not unfairly prejudiced by abrupt termination.
Strategic Considerations, Risks & Practical Tips
Timing is key: Don’t rush termination - ensure that the changed circumstances are well established and stable.
Robust evidence: Market data, working statements (Form 27), historical trends, price comparisons, patentee compliance reports-these provide the backbone for your argument.
Anticipate licence-holder defence: They may argue reliance, sunk investment, expectations, or that circumstances are not sufficiently changed. Pre-empt by addressing those in your narrative.
Transition planning: If termination will displace the licence-holder’s ongoing operations, propose transitional measures where fair (e.g. grace periods, winding down obligations).
Public interest balancing: If the compulsory licence covers essential public goods, the Controller will be cautious to ensure termination doesn’t harm access or affordability.
Clarity in prayer: Be precise-seek termination (complete or partial), and specify whether any residual obligations or rights should persist.
Procedural compliance: Ensure all annexures are certified, signed, and cross-referenced carefully. Incomplete or sloppy filings invite rejection.
Monitor possible appeals: Prepare to defend termination or oppose appeals by licenceholder or others.
