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Working Statement required to be filed by patentees every year continues to be a controversial subject. The frequent change in forms and differing stand of the Patent Office has added to the confusion.
The Indian Patent Office has, after more than two years of the consultation process with stakeholders draft form that it rolled out in2019, has now issued the final structure of Form 27 for submitting the working statement details of a patent.
The detailed analysis of the first revised form and its impact on stakeholders can be accessed https://rnaip.com/indian-patent-office-rolls-out-a-revised-form-to-file-statement-of-working/ The new “Form 27” that comes into effect from 19th October, 2020 forms part of a notification amending the patent rules.
Significant changes brought by the new Form 27 are the following:
a) A single request can now be filed in respect of multiple patents if the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents. The multiple patents should be related and belong to the same patentee.
b) The earlier Form 27was required to be submitted at the end of the calendar year. However, the newform is required to be submitted at the end of the financial year
(31stMarch). The data can be submitted within six months of the deadline that is until 31st September for each year.
c) The new form has been simplified and does not require the patentee to provide:
· Details of licenses and sub-licenses.
· Details of importation (country-wise details)- Only the approximate value/s is required to be given
· The statement whether the public requirement has been met partly/adequately/ to the fullest extent at a reasonable price.
d) Incase of multiple patents, the patentee would have to list all the patents regarding which the form is being filed and specify whether it is worked or not worked.
e) The patentee would have to provide approximate revenue / value accrued from the working of patents and identify as manufactured / imported in India
To sum up, the new Form 27 for furnishing the working statement reduces some burden on the patentees a) by not requiring furnishing details of licenses and sub-licenses b) details of the countries of importation, 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 would persist for the patentees as this data is directly related to the grounds on which compulsory license can besought. Further, it is not clear whether a single form can be filed in case of multiple patents belonging to the same “corporate group” that may exist in the name of different subsidiaries of the group.