ARTICLE
25 February 2021

Statement Of Working Requirements (Form 27) And The Changes Affected By The Amendment Of Patent Rules In October 2020.

The Patent Office has, inter alia, essentially varied the timelines for submitting the Statement of Working Form.
India Intellectual Property
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By a Gazette notification dated 20th October, 2020, the Government of India has amended the Statement of Working Requirements to be submitted in Form-27 to the Indian Patent Office.

I) Timelines:

The Patent Office has, inter alia, essentially varied the timelines for submitting the Statement of Working Form (Form 27). This note is being written to dispel some misconceptions about the timelines for submitting the Statement of Working (Form 27).

The extract of the relevant portion the Gazette Notification is as under:

"The statements referred to in sub-rule (1) shall be furnished 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."

Some Examples of the timeline are as follows:

Case 1: Patent Granted in the financial year 1st April 2020 up to 31st March 2021. The Statement of Working (Form 27) needs to be filed between 1st April 2021 up to 30th September 2021. Similarly, if a Patent is granted between 1st April 2021 up to 31st March 2022, the Statement of Working (Form 27) needs to be filed between 1st April 2022 up to 30th September 2022.

For the convenience of patentees and their attorneys, the table below provides this information as a ready reckoner.

Patent Granted in the financial year/period

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

Patents granted on or before 31st December 2019

Form 27 has already been filed for calendar year 2019. So Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st January 2020 to 31st March 2020

Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st April 2020 up to 31st March 2021

Form 27 needs to be filed for the financial year 1/4/2020 to 31/03/2021

1st April 2021 up to 30th September 2021

1st April 2021 to 31st March 2022

Form 27 needs to be filed for the financial year 1/4/2021 to 31/03/2022

1st April 2022 up to 30th September 2022

Case 2: The patent was granted prior to April 2020 but the 20th year of the patent gets over in the financial year 1st April 2020 up to 31st March 2021. The Statement of Working (Form 27) needs to be filed between the period from 1st April 2021 up to 30th September 2021.

Patent Term (20 years) completed any day within the period

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

1st April 2020 up to 31st March 2021

1st April 2021 up to 30th September 2021

1st April 2020 up to 30th March 2021 that is for the entire financial year 2020 – 2021

Case 3: The patent was granted prior to 1st April 2020 and was due for renewal on any date between 1st April 2020 and 31st March 2021 (The Patentee may have renewed the patent thereafter or allowed it to lapse). Therefore, the patent was alive for some period (even a few days) between 1st April 2020 and 31st March 2021. The Statement of Working (Form 27) needs to be filed for the period 1st April 2020 up to 31st March 2021 and needs to be filed between 1st April 2021 to 30th September 2021.

The patent was due for renewal and therefore alive on any date between

Form 27 to be furnished in respect of which financial year

Time period in which Statement of Working (Form 27) needs to be filed

1st April 2020 up to 31st March 2021

1st April 2020 up to 31st March 2021

1st April 2021 to 30th September 2021

In Case 3, even if the patent holder decided not to renew the patent for the year the Statement of Working (Form 27) still needs to be filed for the period 1st April 2020 to 31st March 2021 and Form 27 needs to be furnished between 1st April 2021 and 30th September 2021.

II) Changes in the content of the form:

1) Details of approximate value or revenue:

The amended Rules now refer to an approximate value and therefore the exact quantum for value or revenue need not be provided. The important information is whether the patent was worked or not worked.

2) Deletion of meeting public requirement:

The new form has deleted this item and the patentee does not require to furnish information whether working of the invention met the public requirement "partly / adequately / to the fullest extent".

3) Single form for multiple patents for the same product:

If several elements of a product are covered by patents or patents of addition, a single Form 27 can be filed for the product. Similarly, if multiple patents were filed, for one continuous process then two single Form 27 can be filed for the entire process with the compilation of approximate total revenue.

4) Licensees of patents:

Licensees of patents are required to submit Form 27 independently and individually.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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.

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