The Government of India has amended the Patent Rules with regard to Statement of Working to be submitted on Form-27 to the Indian Patent Office, by a Gazette notification dated 19 October, 2020.

The extract of the relevant portion the Gazette Notification enforcing the new Patent Rules with regard to filing of Working Report is as under:

“The statements referred to in sub-rule (1) shall be furnished once in respect of 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”.

Financial year in India is April to March.

In view of several doubts and queries from clients worldwide, we give below the correct interpretation of the new deadline and requirements for filing Statement of Working/Working Report for active granted patents , with some easy to understand illustrations.

DEADLINE FOR FILING YEARLY WORKING REPORTS

Deadline for filing yearly Working Report is now 30 September each year.

Period of information /statement of use starts from 1st April upto 31st March each year ( Indian financial year ) .

1. A) For patents granted prior to 1st April 2020 , Working Report must be filed by 30 September 2021 for the period 1st April 2020 to 31st March 2021.
2.  
3. B) For patents granted on or after 1st April 2020 , the first Working Report will have to be filed by 30 September 2022 for the period 1st April 2021 to 31 March 2022 .

The table below will help to clarify the above timeline .

Some further clarifications :

1. Working Report should be filed within 30 September but after 31 March so that the filed Working Report covers the period of use as prescribed by the Patent Rules.
    
2. Working Report is required to be filed only for patents which are 'in force' , unless there is any ongoing contested proceedings or restoration proceedings.
   
   a) Therefore if the patentee allows the patent to lapse/cease by not paying the renewal fee/annuity before the due date for filing Working Report such that the patent is no longer in force, then a Working Report is not required to be filed.
   
   b) Similarly, if the patent term expires before the due date for filing the Working Report , then a Working Report for such expired patent is not required to be filed .

INFORMATION REQUIRED TO BE MENTIONED IN THE WORKING REPORT (FORM 27 ) :

1. The approximate value/revenue accrued in India to the patentee/licensee where the patent is “worked in India”. Brief comments on the nature of working of the patent is required to be mentioned .
    
2. Where a patent has been “WORKED”, it is mandatory to state whether used /worked by way of manufacturing or importing into India.
    
3. Each licensee must file individual Working Reports
    
4. 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.
    
5. For patents which have NOT BEEN WORKED , it is mandatory to provide a brief reason for not working the patented invention and the steps being taken for working of the invention.
    

CHANGES BROUGHT ABOUT BY THE AMENDEMENT RULES EFFECTIVE OCTOBER 2020 :

1. The deadline has changed . It is no longer 31st March each year instead it is 30 September each year
    
2. The period of use to be covered by Working Report has changed . It is no longer calender year 1st January to 31st December , instead it is Indian financial year 1st April to 31st March each year.
    
3. Details of approximate value or revenue accrued has to be mentioned if a 'worked ' report is filed
    
4. Licensees of patents are required to submit Form 27 independently and individually.
    
5. The new 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
    
6. The new form no longer requires the patentee to provide details of country wise quantum of import/manufacture in India of the patented invention.
    
7. The new form no longer requires the patentee to state whether working of the patented invention has met the public requirement “partly / adequately / to the fullest extent”.
    
8. The new form no longer requires the patentee to provide the details of licenses and sub-licenses
    

Very truly yours,           

D. P. Ahuja & Co.      

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