Heavy fines in India if you fail to submit a Statement of working of the patents

The Controller General of Patents in India has issued a Public Notice requiring all Patentees and Licensees to submit a Statement of Working of the patents for 2009 before March 31, 2010.

According to Section 146 of the Indian Patent Act (1970) in combination with Rule 131 of the Indian Patent Rules (2003), each patentee and licensee (exclusive or otherwise) is required to file a statement (Form 27) as to the extent to which the patented invention has been worked on a commercial scale in India. The statement in respect of each calendar year is to be furnished within three months of the end of that year, i.e. on March 31 at the latest.

Although these provisions have been in force for many years, they have not always been followed in the past, nor have they been fully enforced. This is why the Controller General of Patents now has issued a Public Notice proclaiming that all Patentees and Licensees are required to furnish the statements of working in accordance with the provisions above, indicating that these provisions will now be more strictly enforced.

Failure to comply with the provisions, i.e. submitting the statement within the prescribed time period, may lead to a fine of up to one million rupees (Section 122 of the Patent Act).

Failure to comply may also be relevant if someone later files a request for a compulsory license, or revocation of the patent, in India due to non-working of the patent, in accordance with Section 85 of the Patent Act. Compulsory licensing and/or revocation may be in question if the patent is not worked within three years of grant.

The Statement of Working should include information on the quantity and value of production and/or sale in India of the patented invention, as well as any licenses or sub-licenses granted, during the year. It should also be stated whether the patented invention has been made available at a reasonable price to the general public.

Henrik Bratt
European Patent Attorney and member of the Awapatent specialist team "IP in Asia and Russia".

The members of the specialist team for IP in Asia and Russia are dedicated to ensuring our clients’ success in obtaining and defending intellectual property rights in major Asian markets and Russia by keeping up to date with recent developments and sharing our knowledge internally as well as externally, and maintaining a network of the best partners.

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