Indian Patent Office simplifies filing of the Working Statement

The Working Statement which patentees need to file every year continues to be a controversial subject. The frequent changes in the forms and varying stands of the patent office have added to the confusion.

The basis for filing the Working Statement is to ensure that patents are granted to encourage inventions and that they are worked in India on a commercial scale to the fullest extent that is reasonable and practical without undue delay.

In 2015, a public interest petition was filed at the Delhi High Court to bring to the court's attention that Working Statements were not being filed in all cases. Further, patentees were not disclosing complete information in the Working Statement using the excuse that it was confidential. The High Court, while hearing the petition, noted the practical difficulties being faced by patentees in providing the information on the working of patents. In particular, the information on working of a patent to confirm whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price was considered vague. The court directed the patent office to take the appropriate steps required for effecting the necessary modification in the relevant Form 27. As a result of the court's direction, the patent office mooted changes in the structure of Form 27 and invited public objections/suggestions.

The Indian Patent Office, after more than two years of consultation with stakeholders on a draft form that it rolled out in 2019, has now issued the final structure of Form 27 for submitting the Working Statement details of a patent.

The changes brought by the new Form 27 are outlined below:

• A single request can now be filed in respect of multiple patents. The multiple patents should be related and belong to the same patentee. A single request can be filed in cases where the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents.

• The earlier Form 27 had to be submitted at the end of the calendar year with a three month grace period. However, the new form must be submitted at the end of the financial year (March 31) and has a six month grace period. The data can be submitted until September 31 for each year.

• The new form has been simplified and does not require the patentee to provide:

1) details of licences and sub-licences;

2) details of importation (country details) – only the approximate value needs to be given;

3) the statement whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price.

• In case of multiple patents, the patentee would have to list all the patents for which the form is being filed. Further the patentee needs to specify whether it is worked or not worked.

• The patentee would have to provide approximate revenue/value accrued from the working of patents and identify them as manufactured/imported in India.

As per the annual report issued by the India IP Office for the year 2018-2019, the statistics show an increase in the number of forms filed in comparison with previous years. Fourteen thousand two hundred and seventy-seven patents were reported as working as per request on Form 27 filed in 51,104 matters.

Patent holders cannot simply ignore filing of a Working Statement considering the below.

• Failure to furnish information is a punishable offence with fine, which may extend to 10 lakh rupees (approx $14,300). Providing wrong information is punishable with imprisonment which may extend to six months, or with fine, or with both (this has not been amended).

• It can form a ground for seeking a compulsory licence for the patent by a person interested.

• A patent can also be revoked on the ground of non-working (Section 85 of the Indian Patent Act).

• Working or non-working of a patent is also an important factor considered in patent infringement suits.

To sum up, the new Form 27 for furnishing the Working Statement reduces some burden on patentees by not requiring a) details of licences and sub-licences; b) details of the countries of importation; c) declaration whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price. However, the confidentiality concerns regarding providing revenue/value accrued from a patent in a publicly accessible document still persist for patentees. This data is directly related to the grounds on which a compulsory licence can be sought. Further, it is not clear whether a single form can be filed in cases of multiple patents belonging to the same corporate group that may exist in the name of different subsidiaries of the group. Overall though, it is a simplified form that has been widely welcomed by patent holders.