Indian Patent office rolls out a revised form to file statement of working

A peculiar requirement under the Indian Patent Act, section146 (1) read with Rule 131 (2), requires every Patent holder to submit before 31st March, a statement on Form 27 whether a Patent has been worked or not in India. The structure of the form and details required to be submitted have been subject of intense debate among the stakeholders and Patent office. A public interest petition was filed in the year 2015 at the Delhi High Court to bring to the court’s attention that working statements are either not being filed or complete information is not being disclosed by the Patentees under garb of it being confidential. The High Court as part of the hearing on the Petition noted the practical difficulties being faced by the Patentees in providing the information. The court directed the Patent Office to take appropriate steps required for effecting the necessary modification in the relevant Form 27. For more details on step-wise development, please follow our earlier posts. As a result of the court direction the changes in the structure of Form 27 have been now proposed as outlined below. These are open for public objections/suggestions until June 30th whereupon the proposal will be finalized.

The major changes proposed in the new Form 27 takes into account the concerns of the Patent holders as the current structure of the form sought information that was not only onerous but also confidential. The following requirements have therefore been done away with:

  1. details of licenses and sub-licenses are no longer required
  2. details of importation (country wise details)- Only the approximate value/s has to be given
  3. statement whether public requirement has been met partly/adequately/ to the fullest extent at reasonable price, is no longer part of the form.

In addition certain changes noted below have been made to the form to address the concerns of Patentees:

  1. The form has made a distinction between the product and process patents. It requires a patentee to submit approximate value for manufacturing/ importing in India on the basis of the subject matter of the patent i.e. product and process. Where the subject matter is a process, approximate value accrued from the product(s) obtained directly by that process has to be provided. The fact that figures can be qualified as being approximate value will help to maintain confidentiality and not put the patent holders in a position where they are required to provide exact figures and be held responsible for not providing the exact information.
  2. The form addresses the often raised question i.e. formula for determining the value of each patent worked in case of bundle of patents. The new form provides where the value accrued from a particular patented invention cannot be derived separately from the value accrued from related patents, and all such patents are granted to the same patentee(s). In such cases, the value accrued from all such patents can be provided under product/ process category.

The proposed changes to the Form 27 are certainly expected to bring relief to the patentees in complying with this requirement . Though the process of revision of the form has been a work in progress for some time, the timing of it cannot be more appropriate with the newly elected ‘Modi Government’ taking the reins to present an investment friendly image of India.

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