How to Patent in India | Patentability Research Services for Inventions | Idea Protection Services to Foreign Inventors
Call Us: +91 - 9650247494

Legal Compliance on Working Statement of Patents in India * Submit Form 27 on an Annual Basis

Importance of Regulatory Annual Compliance of Submitting Working Statement of Granted Patents in India

Submit working statement of patents in India before 31st March 2017.

Patented invention has been worked or not worked Working Status of Patent in  India
Provide quantum and value (in rupees) of the patented product Worked
Reasons for not working and the steps being taken for the working of the invention in India Not Worked
Patent manufactured in India YES / NO

working statement of patents in India, working statement of patents, form 27 in India

Filing annuity fees to maintain the legal status of granted patent is important. However in India, after a patent is granted patentees in India need to provide information regarding the working of patented invention on commercial scale in India in form 27, within three months of end of each year. So the deadline date to file working statement of patents (form 27) is before 31st March 2017. Even if the granted patent in India is not manufactured or offered for sale, the patent applicant need to furnish the information by filing Form 27.

For example, if the patent is not manufactured or offered for sale the reason of non-working should be mentioned in detail. If the patent is granted in medical and pharmaceutical sector, the reason for non-working could be that the patent has not received FDA regulatory approval for use on humans and is subject of ongoing clinical trials to obtain such regulatory approval (sample reason).

Filing of Form 27 is a requirement under Section 146 (2) of The Patents Act, 1970

Section 146 (1) of patent act provides power to controller to ask for information from a patentee at anytime during the continuance of patent by notice in writing. The patentee or a licensee (exclusive or otherwise) has to provide information related to working of an invention on a commercial basis to controller in the form 27. The time period to furnish the working details is within two months of such notice by controller.

Section 146 (2) of patent Act states:

every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.

Therefore, both patentee and licensee have to submit working data of invention in India to the controller. The controller has an authority to publish the data regarding statements by patentees & license holder.

What data should be provided in Form 27 for working of patents in India?

The most important point is whether the patented invention has been worked or not worked?

  • if not worked, the reasons for not working and the steps being taken for the working of the invention.
  • if worked, the quantum and value (in rupees) of the patented product?
    • Is it manufactured in India;
    • Imported from other countries along with the details of each country;
    • The number of licenses and sub-licenses granted during the year;
    • Whether the public requirement has been met, at a reasonable price either partly, adequately or to the fullest extent?

What happens to Patents which are “not working” in India?

The non-working of a patented invention on a commercial scale in India makes the patent susceptible to compulsory licensing under Indian Patent law. Earlier in the case of Natco v. Bayer, the patent office noticed that the Bayer did not import the drug at all in 2008. However, the pharma company started importing the drug in small quantities in 2009 and 2010. Natco applied for a compulsory license under Section 84 of the Indian Patent law which was then granted by the controller and upheld later by the Bombay High Court.  One of the conditions of  Section 84 is that the patent should have ‘not worked in the territory of India’. If the Controller is satisfied, he may grant the applicant a non-exclusive compulsory license for the balance term of the patent. Natco saw the opportunity that Bayer was not making the drug accessible to patients.

Protection to unused patents would result in economic barony or empire. Douglas, J. quoted Hamilton, Patents and Free Enterprises (1941) (p. 161).

It is common practice to make an invention and to secure a patent to block off a competitor’s progress. By studying his ware and developing an improvement upon it, a concern may ‘fence in’ a rival, by a series of such moves it may pin the trade enemy within a technology which rapidly becomes obsolete. As often as not, such maneuvers retard, rather than promote, the progress of useful arts. Invariably their effect is to enlarge and to prolong personal privilege within the public domain.

In , Sandeep Jaidka vs Mukesh Mittal & Anr. on 9 May, 2014 there was no material placed on record to show that the plaintiff  had actually used the patented invention in India. Information from FORM 27 filed by the patentee himself before the Patent Office disclosed complete non-use of the patented invention.

Non-user of the patent by the patentee is a ground for refusing injunction

The non-user of the patent by the patentee is a ground for refusing injunction. A learned single Judge of the Delhi High Court in N.R.D. Corporation of India v. D.C. and G. Mills Co., refused injunction on the ground of non-user by the plaintiff-patentee. To a like effect is the decision of the Calcutta High Court in Boots Pure Drug and Co. (India) v. May & Baker Ltd., (1948) 52 Cal WN 253 which was followed by the Madras High Court in Manicka Thevar v. Star Plough Works.

It is advisable to Patentees & Licensees to file form 27 on a yearly basis to avoid future repercussions.

What is the due date of filing working statement of Patents (Form 27) in India?

The information should be provided on a annual basis. In present situation, all patentees and licensees need to provide information pertaining to the year 2016 which should be furnished by filing form 27  in India before 31st March, 2017.

What is the cost for filing working statement of Patents (Form 27) in India?

There no official cost for filing Form 27 in India. The statement in form 27  should include information regarding working of a patented invention on a commercial scale in India under section 146(2) and rule 131(1).

What is the repercussion of filing false information in working statement of Patents (Form 27)?

Filing false data (Form 27)  is punishable with fine which may extent to Ten lakh rupees (USD 16,666). However, if the information provided under the Statement (Form 27) is false, there is a punishment with imprisonment up to six months, or with fine, or both.

How to analyse the data generated from Form 27?

Reviewing the working status of different granted patents provides an opportunity to identify the patents which are not working in India. Simply owning a patent won’t generate royalty for the inventor. So if something is of your interest you can negotiate a license deal from the patentee for working the patent in India. You can reach us at info@techcorplegal(dot).com to know more on working statement of patents.

Startups in India can negotiate a license deal from the patent owner for patents which are non-working in India

 

Patent Advocates & Indian IPR Attorneys

Leading IP firm in India with a team of experienced patent strategy consultants who assist startup businesses with patent filing, patent drafting, & protection of trademarks internationally under madrid protocol. Most recommended full service Intellectual Property & Commercial Patent Law firm in India. Direct representation of parties before WIPO and IPO, Coordination and management of Global IP Prosecution and Litigation matters with patent lawyers worldwide, Global IP Strategy and development of Intellectual Assets, Drafting, reviewing and negotiating IP and Technology Agreements (Licensing, Technology Transfer and Collaboration Agreements), Strong patent claim drafting, preparation and prosecution skills for international applications filed before USPTO, EPO, WIPO, UKIPO, MyIPO, IP Australia, & IPOS.