The statement of working of invention: a statutory requirement under patent laws in IndiaMarch 24, 2022 By Khyati Dave
The filing of statement of working regarding the working of patented invention on a commercial scale in India on Form-27 is a mandatory requirement under section 146(2) of Indian Patent Act, 1970 for a Patentee/Licensee. Such a requirement is mandated in order to make sure that the patent right is not abused by the Patentee/Licensee and that the patented invention is worked in India on a commercial scale and also that the patented invention is available at a reasonably affordable price to the public.
In view of last amendments made in rule 131(2) of the Patent Rules, 2003 regarding timeline to submit Form-27, the patentee and every licensee shall furnish a statement as to the extent to which the patented invention has been worked on a commercial scale in India, in Form 27, once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.
Refusal or Failure to furnish the statement of working is punishable with fine which may go up to INR ten lakh (~USD 14000). If the patentee furnishes false information knowingly he shall be punishable with imprisonment that may extend to 6 months or with fine or with both.
Moreover, it can be the ground for the invalidation of the patent and the patent can be revoked saying that the patent is not worked to fulfil the requirements of the public. It also forms the ground for the compulsory licence, any time after three years of grant of patent, any interested person can apply for compulsory licence on the ground that information regarding patented invention is not available and can claim that the patented invention is not worked in the territory of India. The statement of working also plays a vital role in the patent infringement suits.
One Form-27 may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s).
Benefits of regular filing of statement of working
The regular filing of statement of working meets the statutory requirement specified by the patent law in India and by regular filing as per rule specified in the patent laws in India the patentee/licensee can keep himself safe from dealing with the unnecessary prosecution of defending application for compulsory licence or application for revocation of the patent or suit for the invalidation of the patent.
Therefore, the process of filing Form-27 is much simpler and preferable then to deal with the undesirable processes to moot unfair claims of compulsory licences or invalidation of patent. This saves much time and money for the patentee in the long term perspective.
Only getting your patent granted is not enough, the patent attorneys at Parker & Parker make sure to protect your patent rights by advising and timely filing necessary submission for all statutory requirements which is mandatory as per Indian Patent Act.