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INDIA: REQUIREMENTS OF WORKING STATEMENTS

22nd February, 2018

This article relates to a recent order by the High Court of Delhi relating to submission of working statements of inventions which have been patented in India.

Under the Indian patent laws, every owner of a granted patent is required to submit a statement regarding working of the patented invention on a commercial scale in India. The working statements are required to be submitted annually in a rescribed form (Form 27) with a deadline of 31 March every year for the preceding calendar year. The failure to file a working statement with complete and correct information may entail imposition of fine as well as initiation of criminal proceedings and punishment of imprisonment up to 6 months.

In the decision of the Court, reference was made to a way adopted by patentees to circumvent this requirement by stating that the details of the licenses are confidential in nature and such details shall be provided under specific directions from the Patent Office. The Court held that the patentees are required to submit the details of the licenses and sub-licenses granted by the patentee and such information cannot be considered to be confidential. The Court further held that any suppression of
information relating to the details of the licenses and sub-licenses should be treated as failure to comply with the requirements of the Indian Patents Act and directed the Indian Patent Office to take action against patentees who do not furnish the required information.

It must also be noted that the Court held that the argument that the Form 27 being extremely vague in nature should not be an excuse for non-compliance with a statutory requirement.

Although the order is not a final decision as an appeal may be filed against this decision to the Indian Supreme Court, we have to keep in mind that it is mandatory for the patentees to file the working statements of their patented invention to the Indian Patent Office before the prescribed deadline.