India: Commercial Working Statement Proposed To Be Overhauled In Proposed Amendments

Last Updated: 10 June 2019
Article by Essenese Obhan and Aparna Kareer

In its latest proposed amendments to the Patent Rules, 2003, the government of India has proposed to overhaul the antiquated Form 27 (which seeks details of the commercial working of patents), among other procedural clarifications.

The proposed amendments (See), issued by the Department of  Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry come within six months of the last round of proposed amendments, and additionally clarify the timelines for filing Form 27 as well as revised provisions for providing verified English-language translations of priority documents.

  1. New Form 27 proposed 

Form 27 (See) is aunique requirement in Indian Patent law, where patentees must periodically submit details of the commercial working of their granted patents in India. The Form has remained unchanged since 1970 and has been in desperate need of updation for decades. The lack of clarity in its design, that has led to much confusion and ambiguity during filing even led to the filing of a public interest litigation by Shamnad Basheer (W.P.(C) 5590/2015, CM No. 10090/2018). Following the litigation, and on directions from the court, the Office of the Controller General of Patents, Designs & Trademark invited comments from stakeholders to amend Form 27 and conducted stakeholder meeting in March 2018. It has taken more than a year for DIPP to put out the revised new Form 27, based on all these inputs and discussion.

The current Form 27 asks for the "quantum and value of patented product" in cases where the patent is worked. The draft Form 27 removes the requirement of providing the "quantum of patented product", and focuses on value only. It also introduces a distinction between product and process patents.

The draft Form 27 asks for the value (in Indian rupees) accrued from both manufacturing and importing into India. The valuation must focus on the patented products themselves (for product patents), and products obtained directly by patented processes (for process patents).

The draft clarifies that the value is that accrued by the person submitting the Form. The current form has no clarity in respect to this aspect and patentees tend to provide the information suited to them. Moreover, this information, in some cases is not readily available, especially where the patent is licensed or sub-licensed.

In addition, the draft Form 27 also takes away the tedious requirement of submitting details of the countries from where the product is imported from or the process carried out. Currently, the patentee is required to provide a list of all countries from where the "patented product" is imported.

Another welcome change in Form 27 is in respect of products that are covered by multiple patents. In such cases, it is often very difficult to calculate the value of the patented product. The proposed Form 27 allows the patentee to provide a value accrued from all related patents in cases where the value accrued from a particular patented invention cannot be derived separately. In such cases, details of all such related patents are required to be filled in. Thus, the patentee is no longer required to ascertain what value a particular patent will contribute to the product.

Another requirement that has now been dropped is the need to indicate if licenses and sub-licenses have been given for the patent and to provide the list of licensees.

Moreover, in cases where the patent is not worked, the steps being taken for working the invention are no longer required to be provided under the draft Form 27.

Further, the current Form 27 requires the patentee to "state whether public requirement has been met partly/ adequately/ to the fullest extent at reasonable price." The patentee is no longer required to provide any statement with respect of public requirement, which is best judged in a judicial proceeding and not by the patentee.

The Table below gives a comparison of the current Form 27 and the draft Form 27 now proposed:

Current Form 27 Draft Form 27
If worked, quantum and value (in Rupees), of the patented product:

(i)   Manufactured in India

(ii) Imported from other countries (give county wise details)

If worked, details:

(a) where the subject matter of the patent is a product, approximate value accrued in India tothe patentee(s)/ licensee furnishing the statement from that product through:

(a1) Manufacturing in India(in INR)

(a2) Importing into India (in INR)

  (b) where the subject matter of the patent is a process, approximate value accrued in India tothe patentee(s)/ licensee furnishing the statement from the product(s) obtained directly bythat process through:

(b1) Manufacturing in India (in INR)

(b2) Importing into India (in INR) 

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), the details of all such patents, including the patent numbers, shall be provided in part (c) below, and value accrued from all such patents will be provided in (a) and/ or (b) above.

  (c) Provide details in respect of (a) and/or (b) above

The licences and sub-licences granted during the year:
If not worked; reasons for not working and steps being taken for working of the invention: If not worked, details with justification for not working
State whether public requirement has been met partly/ adequately / to the fullest extent at reasonable price:


  1. Timeline for filing Form 27 clarified:

Currently, a patentee or a licensee must furnish information regarding commercial working of their patent in Form 27 every calendar year, within three months of the end of each year i.e., on or before March 31st of the following year. The present rules are silent as to when the first Form 27 is required to be filed after grant of a patent.

The proposed rules clarify this aspect. According to the proposed rules, Form 27 must be submitted, in respect of every calendar year, starting from the calendar year commencing immediately after the calendar year in which the patent was granted. Thus, the patentee is not required to submit a Form 27 for the year in which the patent was granted and should start submitting Form 27s from the subsequent year. March 31st, however, remains the due date for filing.

  1. Verified English Translation of Priority Document 

Currently, as per Rule 21(2) of the Patent Rules, 2003, an English translation of a priority document must be submitted within 31 months from the priority date, for national phase applications where the priority document is not in English. If this document is not filed within this time, the Controller will invite the Applicant to submit the document. The Applicant must file the English translation within three months from such invitation.

However, a conflict is present between Rule 21(2) of the Patent Rules, 2003 and the Regulation under the PCT. Rule 51bis.1 (e) of regulations under the PCT, which states that Patent Offices may only require an applicant to submit a translation of the priority document in limited scenarios. The first scenario is where the validity of the priority claim is necessary to determine if the invention concerned is patentable, and the second is the rare case where the international application filed was incomplete and the applicant claims that the missing information was fully contained in the priority document. In such cases, the patent office may not only insist that the Applicant furnish the translation of the priority document but also indicate as to where that part is contained in the translation of the priority document.

Amendment to Rule 21(2) has now been proposed to make this rule consistent with Rule 51bis.1 (e) of Regulations under the PCT and clarifies that English translation of the priority application is only required in cases specified under the PCT, and not in all cases. This is a welcome amendment for applicants who will no longer be burdened with the extra translation costs towards priority documents. Applicants must however bear in mind that a translation of the PCT application must be filed within 31 months from the priority date.

Comments invited:

These amendments to the rules were published on May 31st, 2019, and members of the public are invited to submit their comments to these amendments within a period of 30 days from their publication, to be taken up for consideration before they are finalised.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions