Statements of working are published — which makes the filings a public record of how seriously the obligation is taken. A look at what multinationals filed for 2012 suggests the answer was: not very.
The confidentiality problem
In an earlier post I discussed the importance of filing the statement of working without addressing confidentiality. Statutorily, the statement may be published by the Patent Office, and the Office made the statements filed for 2012 available online.
The form required disclosure of the number and monetary value of the patented product manufactured in, or imported into, India. That is confidential commercial information, and companies are understandably disinclined to reveal it.
What was actually filed
A brief look at the statements filed by multinational companies showed that they did not reveal confidential information at all:
- An internet giant filed a statement claiming it had never worked its patent in India, giving as its reason “nothing in particular”.
- Another internet giant stated its patent portfolio was so large that it could not be sure whether the patent was worked in India — its products and services being covered by numerous patents — and that it lacked full information on the quantum and value of products or services using its patents.
- A major automobile company likewise claimed it had never worked its patent in India, for the same reason: “nothing in particular”.
That third filing came from the same firm representing the first internet giant, and most statements filed by that firm gave the same reason for non-working. Which raises the question: are these patents honestly not worked, or worked with the information withheld on confidentiality grounds? Perhaps that is the sceptic speaking, but there is a nonchalance to it — something close to it is only illegal when you get caught. What else explains numerous patents of a multinational company going unworked?
Where companies did claim to have worked their patents, they commonly stated they had no information readily available but would provide it to the Patent Office on request.
A practical, if sly, strategy
It is a workable approach. The companies avoid filing false information, which is penalised, and they appear cooperative. Given the Patent Office’s persistent backlog, it would be a long time before it reviewed these forms and acted on inadequate compliance.
The statement for 2013 was due by 31 March 2014, and had not yet been made public. The open question was whether these companies would keep withholding their confidential information until the Patent Office caught on.
How it was resolved
It did not stay an open question. Non-compliance with Form 27 became the subject of a public interest litigation before the Delhi High Court, which pressed the government on both enforcement and the design of the form itself. The proceedings established what filings like these suggested: the obligation was widely disregarded, and the form demanded information companies would not supply.
The outcome was the Patents (Amendment) Rules, 2020, which changed the calculation on both sides:
- Frequency dropped from annual to once every three financial years;
- the form was substantially simplified, removing the detailed breakdown of quantum and value in favour of approximate revenue or value accrued in India; and
- a single Form 27 may cover multiple related patents where the applicant is the same and value attributable to each cannot be separately derived — addressing precisely the “portfolio too large to attribute” objection raised in the second filing above.
That is a sensible resolution of the tension this post identified. The disclosure was reduced to what companies could realistically provide, on the reasoning that a lighter requirement actually complied with is worth more than a demanding one that is not.
What has not changed is the consequence of the answers. A patent not worked in India remains a ground on which a third party may seek a compulsory licence under Section 84. “Nothing in particular” is a candid thing to put on a public record.
The takeaways
- Statements of working are published — the filings are a public record.
- Disclosure was widely minimal — non-working claimed with no reason given.
- A PIL and the 2020 amendment resolved it — three-yearly filing, simplified form.
- Declaring non-working still has consequences — it is a compulsory licensing ground.
Frequently asked questions
Are statements of working made public? Yes — the Patent Office may publish them, and has made filings available online.
Do companies have to disclose sales figures for patented products? The requirement was substantially reduced by the 2020 amendment, which replaced the detailed quantum-and-value breakdown with approximate revenue or value accrued in India.
How often must Form 27 be filed now? Once every three financial years, following the Patents (Amendment) Rules, 2020 — previously it was annual.
What are the risks of declaring a patent not worked? Non-working in India is one of the grounds on which a third party may apply for a compulsory licence under Section 84.