CONFIDENTIAL

Annual Statement on Form 27 by the patentee(s) and their licensee(s) giving the extent of commercial exploitation in India of the patented invention is called a Working Report. Filing of a Working Report is a statutory requirement.

A Working Report has to be filed even if there has been no commercial exploitation of the patent, in India.

Each licensee has to file a separate Working Report irrespective of whether the patent has been worked or not worked.

In case of co-patentees , if the patent has been worked by any one of the patentees in India in the relevant period , then the patent is deemed to have been worked in India .

Working Report should be filed only for those patents for which the current annuity has been paid or will be paid within the applicable renewal deadline and the patent is in force.

Working Reports are not required to be filed for lapsed patent or patents which the patentee does not wish to renew by paying the current year renewal fee or for patents where the patent term has expired/will expire in the current year.

Further, as the Statement of Working has to be filed every year for the previous financial year ( Indian financial year 1^st April to 31^st March ) there is no need to file a Working for the financial year in which the patent was granted.

As per the Patents (Amendment) Rules, 2020 effective from October 2020, a Statement of Use/Working shall be furnished once for every financial year, starting from the financial year commencing immediately after the year in which the patent was granted and shall be furnished within six months from the expiry of each such financial year.

Deadline for filing yearly Working Report is now 30 September each year covering the period of use from 1^st April upto 31^st March each year ( Indian financial year ) .

A) For patents granted prior to 1^st April 2021 , Working Report must be filed by :
30 September 2022 covering the period 1^st April 2021 to 31^st March 2022.

B) For patents granted after 1^st April 2021 , the first Working Report will have to be filed by :
30 September 2023 covering the period 1^st April 2022 to 31^st March 2023.

Working Report for the year 2021 is required to be filed by 30 September 2022 covering the relevant period of use 1^st April 2021 to 31 March 2022 ( Indian financial year 2021-2022 ) for all patents granted before 1^st April 2021 and which are currently in force by way of timely renewal

1. Whether the patent has been worked or not worked in India in the relevant period.

2. Name and address and nationality of the patentee as recorded with the Patent Office . This is mandatory. Any change of name/address of the patentee or ownership of the patent has to be separately recorded at the Indian Patent Office against the patent.

3. Name and address and nationality of the licensee ( if any) where you wish us to file Working Report for the licensee as well. This is mandatory.

4. The approximate value/revenue accrued in India to the patentee/licensee where the patent is “worked in india” should be mentioned under the applicable head “Manufacturing in India” or “Importing into India”. If patentee is unable to provide an approximate amount of the revenue accrued by working/using the patent, then you can leave it blank on the Working Report form.

5. Where a patent has been “worked”, it is mandatory to provide brief comments on the nature of working of the patent in India ( we shall edit your comments and put appropriate wordings after we receive your instructions).

6. For patents which have not been worked , it is mandatory to provide a brief reason ( 5 to 20 words) for not working the patented invention and the steps being taken for working of the invention in India. If the patentee is unable to specify the reason for not being able to work/use the patent in India, we shall put an appropriate brief reason for non-working after we receive your instructions.

The authorised local agent of the patentee/licensee can sign the Statement of Working on Form 27 on behalf of the patentee/licensee . The Form 27 does not require the signature of the patentee or licensee

The patentee may file a Statement of Use/Working on Form 27 on behalf of the licensees , however, a separate Form 27 for each licensee has to be filed in addition to the Form 27 for the patentee.

Yes, if patentee is unable or unwilling to provide an approximate amount of revenue accrued by using the patent in India, a “worked” report can be filed without declaring the revenue.

The amended Working Report Form allows single submission of related patents( used together) wherein the approximate revenue/value accrued from a patented invention cannot be derived separately from the value accrued from related patents and all such patents are granted to the same patentee. In other words the consolidated revenue accrued by using the related patents can be mentioned as the revenue amount when filing Working Report for each of the related patents.

We do not need a Power of Authority either from the patentee or the licensee to file Working Reports , we simply need you to provide us with the Working Report form duly filled-in with the data detailed above

Information submitted in Working Reports is not treated as confidential. Working Reports are made available to the public on the official website of the Indian Patent Office.

No supporting documents are required to be submitted when filing a Working Report . The declaration of the approximate revenue accrued amount is sufficient without any requirement to submit documents/invoices.

A. Non-filing of Working Report does not result in revocation or lapse of the Patent, however, non-filing of Working Statements under Section 146 (2) can result in imposition of fine under Section 122(1) (b), which may extend to One Million Rupees ( approximately, twelve thousand six hundred U.S. Dollars) and if any person submits false information then it may result in the imposition of fine as well as imprisonment, which may extend to 6 months, under Section 122(2).

The imposition of the fine under Section 122(2) is not strictly enforced as of now. However, in some situations, competitors and rivals have used this route to harass patentees, and even to block enforcement of the patent on this ground.

In case of an infringement suit, if the defendant can show that the patentee has failed to file the statutory Working Report, no injunction whether interim or temporary may be granted by a Court of Law, in favour of the patentee till the trial is over. This is a severe disadvantage.

In case of an infringement suit, if it is shown that the patented invention is “not worked” in India, no injunction will be granted by a Court of Law, in favour of the plaintiff/patentee. Hence the Working Report as available on the Indian Patent Office website is cited by most defendants to ensure that no preliminary injunction is granted.

The infringer can also use the data submitted by the patentee and in the declarations made by the patentee in the Working Report to show discrepancies in the averments made in the Patent infringement complaint and Working Report. Should a mismatch or false statement be detected then a petition can be filed in the Court directing the Patent Office to act against the Patentee and pass an Order under Section 122(2), irrespective of the merits in the infringement suit.

Please let us know if you need any further assistance.

Very truly yours,
D. P. Ahuja & Co.