In one of our previous blogs, we covered about the changes introduced through the Patents (Amendment) Rules, 2020 ("2020 Amendment Rules") which came into force on October 20, 2020. Among other things, major change has been introduced with respect to the manner in which the statement of working of patent in Form 27 has to be furnished. The process for revising the working statement requirement under rule 131 of Patent Rules, 2003 ("Patent Rules 2003") was set in much earlier in May 2019 when Government of India circulated a revised format of the proposed Form 27 for discussion and views from various stakeholders. A culmination of all such discussion is this revised Form 27 and rule 131. Reader can refer to our blog posted in March 2020 which talked about the then prevailing requirements for filing a statement of working of patents in Form 27 ("Statement").
For the benefit of our readers, particularly all patent holders in India, we've provided below a brief outline of what the changes mean for a patent holder and what kind of disclosure a patentee has to make to comply with the new rules and keep their patent in force in India.
- Whether patent is being 'worked' in India or not: There has been no change in the understanding as to what constitutes 'working' of a patent in India. Briefly, information pertaining to any kind of manufacturing done in India, including licensing, even for exports, and any kind of import, of a patent product or article manufactured using the patented process has to be furnished. Patent holder has to state, by checking the appropriate box, whether patent has been worked ('yes') or not worked ('no'). Accordingly, one the next two sections in the Statement has to be filed by either providing information pertaining to working of the patent or reasons for not working the patented invention and steps being taken for working of the invention in India (in 500 words).
- Information required in case patent is 'worked' in India: Essentially, information on the revenue or value accrued in India from manufacture and/ or import of a patent or related patents is required. In a major relief to patentee(s), a single form 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). A brief, in not more 500 words, of the manufacture, licensing and import has to be provided. A requirement under the Patent Rules 2003 wherein patentee has to state whether reasonable requirement of the public in India has been met by the patented product has been done away with. Furthermore, the earlier requirement of providing quantum of manufacture and/ or import into India has been removed.
- Who has to file: Every patentee and licensee, irrespective of the nature of license held, would have to furnish the Statement. Joint holders of a patent, be it natural person(s) or legal entity, can file a single Statement. Each licensee(s) however would have to file the Statement(s) separately.
- Time period to be considered: The period to be considered has been changed under the 2020 Amendment Rules – 'Calendar year', that is, period from January 1 to December 31 of a year has been replaced with 'Financial Year, that is, period from April 1 to March 31.
- Time by which Statement has to be filed: As per new rule 131(2), under the 2020 Amendment Rules six(6) months' time has been provided to patentee and licensee to furnish the Statement. Thus, information pertaining to the period April 1 to March 31 has to be furnished by September 30. Moreover, Statement is not required to be filed in the Financial Year in which the patent has been granted.
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.