Patent Working Statement – The New Law – The New Form

1. Submission of Working Statement (Rule 131)

New Rule: The new rule 131 (2) states that a working statement has to be furnished once for every financial year(instead of calendar year under the old law) and shall be furnished within six months (instead of three months under the old law) from the expiry of each such financial year, and the statement has to be furnished starting from the financial year commencing immediately after the financial year in which the patent was granted.

Notes: The amendment has specified that working statements should be filed for each financial year ( April – March in India)  within six months from the expiry of such financial year. For a Patent granted in a financial year, the statement has to be furnished starting from the financial year commencing immediately after the financial year in which the patent was granted and within six months from the expiry of such financial year. Thus if the patent is granted on  31^st October 2020 (i.e., financial year April 2020- March 2021), the first working statement for such patent needs to be furnished for the financial year April 2021-March 2022, should be filed prior to September 30, 2022.

2. Amendment in Form 27

The working statement is required to be filed on Form 27 and with the amendment of the law form 27 has also been  amended. Multiple patents can now be covered in one form 27 ( instead of a single patent as in the earlier) and  such amendment has been brought in so that details of working can be furnished in respect of a technology which is practiced using the features of several patents in combination.

SALIENT FEATURES OF THE AMENDMENT OF LAW

i. Provision has been made to include multiple patents by the same patentee/licensee (provided they are related) which have been worked together and details of all such patents and the total amount of the same to be provided.

ii. Provision has been made such that all such patents worked and not worked and value accrued in INR to be provided for manufacturing as well as importing for each separately.

iii. For patents which are worked the details are to be provided in 500 words

iv. For patents which are not worked the details are also to be provided in 500 words

In accordance with Section 146 and Rule 131 of Indian Patents’ Act, 1970, Patentees in India have an annual obligation to submit to the Indian Patent Office, ‘working statement’ through Form 27 wherein details have to be provided as to how far and to what extent their patented invention has been commercially worked in India.

Penalty provisions for not complying with Section 146/failure to submit Form 27:

• Under Section 122 (1) (b), if any person refuses or fails to furnish to the Controller any information or statement which is required to be furnished by or under Section 146, shall be punishable with fine which may extend to ten lakh( one million)rupees (eqv. US$14000 approx).
• Further under Section 122 (2), if any such information furnished by the patentee is false and which he either knows or has reason to believe to be false or does not believe to be true shall be punishable with imprisonment which may extend to six months, or fine or both.

Pursuant to directions from the Delhi High Court, the Patent Office had sought inputs from the Patentee/stake holders for amending the working statement “Form 27”.  The Indian Patent Office vide gazette notification dated 19 October 2020, notified Patent Amendment Rules, 2020. Vide said Patent Amendment Rules, 2020, the Indian Patent Office made vast changes with regards to the timelines/period and information to be submitted in the FORM 27.

In view of the recent amendments in FORM 27 as well as in view of the recent litigations with regards to filing of periodical working statements, it is likely that the Indian Patent Office may ensure that the Patentees comply with the working statement requirement.

Therefore it is in Patentee’s interest to ensure timely compliance with the submission of working Requirement to avoid facing any adverse consequences.

NEW FORM 27

Vilas Shetty

A practising patent attorney for over 9 years, Mr. Shetty’s responsibilities include prior art searches, patent searches in India, drafting patent specifications, providing patentability and infringement opinions, patent oppositions and other invalidity proceedings particularly those relating to fields of chemistry and pharmaceutics. He also works closely with the litigation team in matters concerning infringement of patents.

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