Statement Of Working Of Patents In India (Form 27).

1 February, 2017

 

(For the calendar year 2016 to be submitted by March 31, 2017)

 

FAQs (Frequently Asked Questions)

 

Q: What is a working statement?

 

A: Under Indian Patent law, every patentee and every licensee of a granted patent are required to file a statement as to the extent to which the patented invention has been worked on a commercial scale in India.

 

Q: Is working statement required to filed only for granted patents?

 

A: Yes, working statements are only required for granted patents.

 

Q: Is it required to be filed annually?

 

A: Yes, working statements are requirement to be filed annually in respect of all granted patents in India. The time line to file the statement is March 31 every year for the preceding calendar year. For instance, March 31, 2017 for the working of patent in 2016 in respect of all patents which were granted prior to July 2016

 

Q: Is there any Form prescribed for this statement?

 

A: Yes, Form 27 (please see the attached specimen)

 

Q: Can this Form be filled and filed electronically?

 

A:  Yes, the Form can be filled and filed electronically. If filed by a patent agent/attorney, the Form must be filed electronically. However, if filed by the patentee or licensee having address in India, it can be filed either electronically or by submitting a physical copy with the Patent Office.

 

Q: Is working statement required to maintain a patent in India?

 

A: No. Not filing of working statement does not affect the legal status of a patent in India, as long as the necessary annuities, required for maintaining the patent, are paid within the prescribed period. Foreign patentee or licensee would have to engage an Indian patent agent/attorney.

 

Q: Can a patent be abandoned for failure to file a working statement?

 

A: No

 

Q: Does the patent owner get notification if a patent goes abandoned in India for failing to file the Statements of Work?

 

A: No, a patent is not abandoned for failure to filing a working statement. The underlying legal objective behind filing of working statement for a granted patent in India, is to inform the public about the working or not working of patent so that if a patent is not worked for 3rd years from the date of its grant or the reasonable requirement of the public with regard to the patented invention is not met, then an interested 3rd party can use that information to approach the patentee to seek voluntary license to work the patent in India. And in case, the patentee refuses to license or exercise unreasonable conditions for issuing the license, then that 3rd party can approach the Patent Office for issuance of compulsory license.

 

 Q: What is the consequence of not filing a working statement for a patent?

 

 A: Not filing of working statement may entail imposition of a penalty up to USD 25,000.

 

Q: What is consequence if the information provided in the working statement is incomplete, incorrect or false?

 

A:  Furnishing false information in the working statement knowingly or having reasons to believe it to be false or not true, may attract criminal prosecution and punishment of imprisonment up to 6 months. So far, we do not have any case of a patentee or a licensee being prosecuted for non-compliance of this requirement, yet we suggest completing this procedure every year with as much information the patentee has about the working of the patent in India.

 

Q: What information to be given if the patentee knows that the patent is not worked in India?

 

A:  Please click “not worked” of Form 27 and provide reasons for not working, which could be:

Due to lack of market potential for the invention; Market is being developed;
May be worked in the future depending on market demand and when technology is mature;

 

The patentee is actively working to develop a market for the patented product/process in India. The technology may be available for licensing;
The patentee is in the lookout for appropriate working opportunities in a large scale

 

Q: How to file a working statement, if the patentee has no information as to whether the patent is worked or not in India?

 

A: We suggest filing the working statement as “not worked” in such a scenario. Alternatively, in the online Form 27, “not worked” can be selected, and suitable hard copy of Form 27 (without specific indication of “worked” or “not worked”) can be uploaded.

 

Q: How to file a working statement, if the patent knows that the patented invention has been worked in India, but does not details of the quantum and value of sales and other revenues?

 

A: If Patent is WORKED, we suggest the following:

 

Sn.	Value/Priority of a Patent	Working Statement submission Options
1.	Patents of High Priority   Commercialized and having high potential of infringement Already under litigation in a foreign country	Option 1 – Complete details:   Indicate Quantum of Sales and Revenue generated by direct and indirect use – based on internal evaluation.(Indirect use includes use by licensee) Indicate whether the product is manufactured / imported. Option 2 – Part details: Indicate Quantum of sales or Revenue generated by direct use – based on internal evaluation. Provide a list of licensees if licenses have been granted. Indicate whether the product is manufactured / imported.
2.	Patents of Medium priority	Option 1 – Rough Estimate:   Provide rough estimate of the Quantum of Sales by direct use – internal evaluation. State that licensees have been granted. Name(s) of licensee(s) can be withheld. Option 2 -Publically available information: Provide Sales figures as available from public sources; or Provide market share from public sources; or Provide Revenue figures from Annual Report – Group wise/Department wise/Unit wise. State that licensees have been granted, if licenses have been granted. Name(s) of licensee(s) can be withheld.
3.	Patents of Low Priority	Option 1 – Affirmative   State that patent is worked. State that further information may be provided when asked by the Controller.

Note:

 

If plurality of patents ought to be commercialized together, i.e., incorporated in a single product / process:

 

• Give a list of patents as annexure, and
• File the same statement in all patents.

 

If it is ascertained that the patent has not been worked, please indicate that the patent is not worked.

 

 

For further information, please contact: 

 

Manisha Singh, Partner, LexOrbis

manisha@lexorbis.com