The much-awaited amendment to the Indian Patents (Amendment) Rules, 2020, came into force on 19 October 2020. The amendment relates to the Indian Patent Office’s requirement of annual filing of the statement of working of patents by the Patentee/Licensee.

Single Form for multiple related patents:

One form may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue/value accrued from a particular patented invention cannot be calculated separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s). However, each licensee shall file this form individually.

Due date to file the statement of working of patents extended:

Under the current amendment, the statement of working of patents in India should be filed within 6 months from the end of each financial year. i.e., September 30 of the current year. In India, a financial year is from April 1 to March 31 of the subsequent year.  The Statement of working of patents is not required to be filed in the Financial Year in which the patent in granted.

Simplifying the information required:

a. The following information is required to be filed in Form 27.

  1. Whether each patent in respect of which this form is being filed is worked or not worked in India.
  2. If not worked, the reasons for not working the patented invention(s) and steps being taken for working of the invention(s).
  3. If worked, the following details need to be provided:

a. Approximate revenue/value accrued in India to the patentee(s)/ licensee furnishing the statement from patent number(s) where the working is through:

    1. Manufacturing in India …… (in INR)
    2. Importing into India ………. (in INR)

b. Brief comments in respect of (a) above.

 b. The following requirements have been deleted.

  1. Quantum and monetary values of the patent products (which includes products made through patented processes) manufactured in India and imported from other countries.
  2. Licenses or sub-licenses if any that were granted in respect of the patented invention.
  3. If the reasonable requirements of the public had been met either partly, adequately or to the fullest extent possible.
  4. If the patent invention was made available to the public at reasonably affordable prices.

In addition to the above, the Amendment Rules deals with the filing of the Priority document and the English translation thereof in respect of PCT applications in India.

The Indian Patent Office would access the priority documents through WIPO Digital Access Service (DAS). An English translation of the priority document would be required to be submitted with the Indian Patent Office within 31 months of the earliest priority date, only when one or more valid prior art references are cited in the International Search Report, which falls between the earliest priority date and the international filing date of the PCT application. In cases where the priority documents or English translation thereof are not submitted within the prescribed time, then it could be submitted within 3 months from the date of receiving any communication from the Indian Patent Office.

With the simplification of the information required for compliance, it is now likely the Indian Patent Office would enforce the letter of the law to ensure that the patentee and licensees file their statement of working of patents on time.

You can also read about the Importance of filing the Statement of Working of Patents in India.