Working Statement: Use this straightforward procedure to safeguard your invention
Kalpana Tiwari
Lexgin IP
A patent is a monopoly right given by the government to the inventor to use his invention, get benefits from it, and exclude others from using it without his or her permission.
But the main problem arises if the inventor does not use his patent for commercialization purposes or if he does not want to get the benefits of his invention (even at a cost) to permeate society.
The question arises: Will the patent remain a showpiece then?
To resolve your queries, we suggest the most appropriate ways to save your noble work through a working statement. The Indian Patent Working Statement falls under Form 27, so let’s go over the new amendments to the law.
ACCORDING TO THE SECTION 83, INDIAN PATENT ACT 1970
- The Patents are granted to promote inventions and to assured that the inventions are worked in India on a commercial scale and to the fullest scope that is reasonably practicable without undue delay.
- The Patents aren’t just granted only to enable patentees to use and get benefits to use and enjoy a monopoly for the importation of the patented article.
- Also, the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual benefit of producers and users of technological knowledge and in a way conductive to social and economic welfare, as well as to a balance of right and obligation, are facilitated by the protection and enforcement of patent rights;
- The patents granted do not impede protection of public health and nutrition and should act as an instrument to promote public interest especially in sectors of vital importance for the socio-economic and technological development of India;
- The patentee does not misuse the patent rights;
- The purpose of the patents is to make the public’s access to the patented invention’s benefits at relatively low cost.
In order to make sure the inventions are worked in India on a commercial scale, Indian patent working statement mandates all patentees or patent licensees to inform the Patent Office regarding their patented invention’s use on a commercial scale in India.
The Process of Indian Patent Working Statement:
According to Section 146(2) of the Patents Act, 1970, every patentee and every licensee (whether exclusive or otherwise) shall provide statements as to the extent to which the patented invention has been worked on a commercial scale in India in the manner, form, and at such intervals (not being less than six months) as may be prescribed.
In accordance with Rule 131(1) of the Patent Rule, working statements must be submitted in Form 27. Indian Patent Office within three months of the end of each year, or by or before the 31st March of the next calendar year. The “worked” or “not-worked” tabs on Form 27 are options for the patentee or licensee.
In case patents are worked, the patentee must disclose information regarding the price and sales of the patented product that was made in India or imported into India. Also, the patentee must submit information about the licensee, including the licensee’s name and other facts, in the event that the patentee issues a license to use the patent in India.
In case patents “not worked”, no additional information is required to be given except the reasons for not working, which could be – the patented invention is not fully developed into a marketable product, invention is under regulatory approval, the market is not mature for the patented invention, the patentee is on a lookout for right partner/licensee, etc.
Importance of working statement for Patent holders?
- If Patentee and licensee failure to furnish information cause punishable offence with fine, which may extend to 10-lakh rupees. Also, providing wrong information is punishable with imprisonment which may extend to six months, or with fine, or with both (this has not been amended).
- If Patentee and licensee failure to furnish information will generate a ground for seeking a compulsory license for the patent by a person interested.
- Under section 85 of the Indian Patent Act, a patent can also be revoked on the ground of non-working.
Recent amendments under Form 27:
On May 31, 2019, the Government of India distributed the updated new Form 27, and the proposed format of Form 27 was discussed by the stakeholders throughout numerous rounds of meetings with the Government.
Following significant amendments have been made by the way of amended rules:
- Deadline for filing extended.
- Approximate value accrued.
- Requirement for details of licensees.
- No requirement to provide statement on meeting public requirement.
- One form for multiple patents:
The revised procedure permits the filing of a single Form 27 in respect of multiple patents. If they meet three requirements. First, they should be related patents. Second, the approximate revenue or value accrued from one patented invention cannot be derived separately from that accrued from related patents. Third, all such patents are granted to the same patentee or entity.
Frequently asked question
- What are Working Statements?
As per Indian patent law, all patent holders and patent licensees are required to notify the patent office of any commercial use of their patented innovation in India.
- What are purpose of Working Statements?
The propose of working statement is to promote inventions and to assured that the inventions are worked in India on a commercial scale and to the fullest scope that is reasonably practicable without undue delay.
- What changes are made to the Patent Rules regarding the filing of Working Statements?
As per amended rules, the changes made regarding filing of working statements are deadline for filing extended. Approximate value accrued; requirement for details of licensees; no requirement to provide statement. On meeting public requirement; one form for multiple patents.
- When is the working statement deadline?
The deadline of the working statement Annual Working Statement is required once a year. In respect of the preceding financial year, which in India runs from 1 April to 31 March.
- Is it possible to submit a single Form 27 for several patents?
Yes, it is possible to submit a single Form 27 for several patents.
- What data or information must be entered on the new Form 27?
The information that must be entered on the new Form 27 are:
- Name(s) of the Patentee(s) / Licensee(s)
ii. Patent Number
iii. Details of Worked / Not Worked
iv A rough estimate of the profits or value earned in India. The patent holders or licensees who provided the statement from the patent(s) where the working.
a) Manufacturing in India (in INR)
b) Importing into India (in INR) - In case patents are worked, the patentee must disclose information regarding. The price and sales of the patented product that was made in India or imported into India.
