How to file a statement of working of a patent in India?
STATEMENT of WORKING of PATENT in India
Every patentee or licensee of a granted patent in India is required to submit working status (statement) of the patent in India.The primary purpose of statement of working of a patent in India is to inform the Patent office that the patented invention has been made available to general public.
The total revenue figure is to be provided to inform how widely is the patented invention available and is generation business under monopoly for the applicant.Patents are granted to encourage the growth of technology and to ensure that the patented invention is used for the welfare of the public.
Filing of statement of working provides the patent office with information relating to commercialization of the patented invention in the territory of India thereby preventing the non use of patented inventions.
According to Section 83 of Indian Patent act, ‘..patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public’ therefore every patentee and every licensee of a granted patent is required to file a statement as to the extent to which the patented invention has been worked on a commercial scale in India.
As per the said Section 83 of the Indian Patents Act, 1970, that patents are not granted ‘merely to enable patentees to enjoy a monopoly on a patented article’,1 but ‘to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay’. Consistent with the goal of technology transfer, ‘the protection and enforcement of patent rights contribute to … technological innovation, … the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge, and in a manner conducive to social and economic welfare, and to a balance of rights and obligations’…If the patent is worked in India, then the statement must indicate quantum and value of the patented product. Further licenses and sub-licenses granted for the patent is also required to be submitted.
If the patent is not worked in India, the statement must indicate a reason for non-working of the patent in India.
If a patentee or licensee refuses or fails to furnish information required under Sec 146, the patentee or licensee will be punished with fine, which may extend up to Ten lakh rupees under Section 122(1)(b). Further, providing wrongful information or statement can impose the patentee/licensee to imprisonment up to six months or fine or both Section 122(2).
Section 146(2) of the Patent’s Act, 1970 requires patentees and licensees to submit a statement of commercial working of the invention (Form 27) to the Controller every year. Such statements can be published by the Controller General for public viewing.
Failure to submit information on statement of working is punishable and attracts a hefty fine which may extend up to Rs.10 lakh. Further according to Section 122, providing false information regarding working of an invention is considered as an offense and is punishable with imprisonment up to six months and a fine, or both.
If the working statement for the patent is not filed, then a penalty up to US$ 18,000 may be imposed on the patentee.
As the consequences of non-submission of the working statement can be severe, we recommend filing of the working statement before 31st of March each year.
How to file a statement of working of patent in India?
The statement of working of patent in India is to be submitted as made out on form 27.
The relevant information is to be submitted by patentees and licensees in a Statement Regarding the Working of the Patented Invention, as per Form 27 are as follows:
- whether the patented invention has been worked or not worked;
- if not worked, the reasons for not working and the steps being taken for the working of the invention.
- if worked, the quantum and value (in rupees) of the patented product?
- Is it manufactured in India;
- Imported from other countries along with the details of each country;
- The number of licenses and sub-licenses granted during the year;
- Whether the public requirement has been met, at a reasonable price either partly, adequately or to the fullest extent?
In addition to the above voluntary disclosure, the controller at any time, if required, may ask the patentee or the licensee to provide details in writing as to what extent the patent has been commercially exploited in India, as per Section 146(1).
Attorney fee for filing a statement of working of a Patent in India
There is no official fee payable to the Patent Office to file a statement of working of patent in India. We charge attorney fee of US$75 to prepare all the documents mentioned above and file this statement of working.
Statement of Working useful for granting a Compulsory license
Information provided in the statement of working is used while deciding on applications for compulsory license on patents. The Intellectual Property Appellate Board (IPAB) of India, while granting the first compulsory license in India heavily relied on the information provided in the statement of working submitted by the patent owner.
In the above instance, Natco was granted a compulsory licensee to a patent, which was held by Bayer, covering the Nexavar drug. The IPAB relied substantially on the information submitted by Bayer corresponding to the patent, while granting the license.
Statement of Working useful during Patent litigation
In case of infringement, the patent owner, as relief, can seek injunction and damages or an account of profit under Section 108. The information submitted in statement of working can be used by the court to estimate the damages that may be awarded. On the other hand, in case statement of working is not filed, the alleged opponent may argue that the patent owner might not have encountered any damages in view of the missing statement of working.
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This article has been written by
Patent attorney in India
I, Mahesh Bhagnari, am the Managing Principal of the firm:
- I am an Attorney at Law with Bar Council Registration № MAH/1574/2003.
- I am licensed to practice at the Intellectual Property Office as a Patent attorney in India and Design attorney in India with Registration № IN PA 1108.
- I am licensed to practice as a Trademark attorney in India with Registration № 10742.
- I have more than eighteen years of professional experience working in the field of Intellectual property.
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