The working of a “working statement”

In our previous post, we had reported a dramatic development in a public interest petition pending before the Delhi High Court, bringing to the court’s attention that working statements required to be filed by the Patentees and licensees (every year on or before 31st March) are either not being filed or complete information is not being disclosed under the garb of it being confidential. Our earlier post can be accessed here. The recent order passed by the High Court, on 7Th Feb, 2018, in the continuing saga of “manner of submitting Information about working statement” (on Form 27) has brought relief to the Patentees.

The court passed the following directions at the hearing:

  1. The Patent Office has been directed to come up within two weeks, the timeline regarding the manner in which the steps required for effecting the necessary modification in the Form 27 and provisions concerning filing of working statement. An affidavit is required to be submitted by the Patent office outlining the timelines.
  2. The court clarified its earlier order dated 10th January, 2018 whereby it directed all Patentees to submit details of the licenses and sublicenses and such information cannot be withheld on ground of being confidential. The court noted that “details of licensees, licenses and sub-licensees” is only the specification with regard to number, date and particulars of the licensees and sub-licensees. In case, any party has reservation of any kind in furnishing details, it would have to disclose the reasons for such reservation and the patent office would be required to take a view in the matter so far as its satisfaction regarding compliance with the requirements of Section 146 is concerned.

Our Comments:

The recent order of course brings a big relief to the Patentees and is widely welcomed by all stakeholders. Generally there has been a strong push from patentees about restructuring the requirements of filing working statements considering all of the information is being made  publicly available through Patent office website. Our earlier post outlining the challenges being faced by the Patentees in submitting working statement can be accessed here. The last word is yet to be written in this saga as the patentees hope the court will bring about meaningful resolution to the matter.

Disclaimer: The content of this article is based on personal understanding of the authors and is not intended for any legal advice. Customised solutions and strategy needs to be devised for specific situation.

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