Patents are granted for the purpose of protection and to guarantee their commercial utilization. If a patent remains unused or without commercialization, it does not contribute to society. Hence, it is crucial for patent holders to disclose details about how their invention is being implemented on a commercial level in India, as highlighted in Form-27 of “The Patent Act, 1970 (39 of 1970) & the Patents Rules, 2003”.
In India, patent holders must submit a statement detailing the commercial use of their patent within the country, as outlined in Form-27 of the 2003 Patent Rules. The statement should include information on commercial scale application, reasons behind non-application, quantity and value of patented products, licenses granted, and fulfillment of public requirements at a reasonable price.
The original legislation mandated that the patentee or licensee must provide the designated details on a yearly basis, no later than three months after the year concludes, setting the due date for submission as March 31st of the respective year. The law aimed to improve compliance and the effectiveness of patents but fell short, as highlighted in a public interest litigation (PIL) brought before the Delhi High Court in 2015. The previous Form-27 was unclear on key aspects such as the definitions of ‘adequate extent,’ ‘fullest extent that is reasonably practicable,’ ‘commercial scale,’ and others, prompting an amendment to enhance compliance and address stakeholders’ concerns.
Highlights on amendments:
- Working Statements: Patentee or licensee are now required to submit statements regarding the working of your patent once every 3 years, beginning from the fiscal year following the year in which the patent is granted. Submissions must be made within 6 months, and there is a possibility of an extension of up to 3 months. This change significantly reduces the burden for applicants to provide annual updates to the IPO on the functioning of their invention.
- Clarification on the meaning for: ‘commercial scale,’ ‘adequate extent,’ ‘fullest extent’ ‘that is reasonably practicable’, etc.: The 2015 PIL before the Delhi High Court highlighted the need for clear definitions of terms like ‘commercial scale,’ ‘adequate extent,’ and ‘fullest extent.’ It raised concerns about the absence of guidance for assessing if patentees had fulfilled public obligations regarding their patented inventions. This lack of a defined standard led patentees to interpret the requirement based on their understanding.
- Confidentiality of Information: The revenue or value of the patent is not needed. If the patent is being used, stating is sufficient. If not, select a reason from the form or provide your own. The form now includes a question about licensing availability, and nonuse cannot be claimed solely due to product import into India. The requirement for business-sensitive information to the IPO has been reduced.
- No need to file multiple forms: The Form-27 previously required separate submissions for each patent even if they were related, making it difficult to track their revenue individually. The new amendments eliminate the need for multiple forms.
Aumirah trusts that the new Form-27 is significantly improved. This change has been widely requested by patentees and licensees as it removes ambiguity and requires less information. Aumirah provides a variety of intellectual property solutions for inventors, businesses, law firms, and more. Through its India Patent Filing and Prosecution services, Aumirah can help you protect your invention with a well-crafted patent draft prepared by experienced patent attorneys, ensuring efficient and cost-effective protection. Contact us for more information on this and other services provided by Aumirah.