Welcome to D. P. Ahuja & Co.- Indian Intellectual Property Law Firm

» Patentees need to file every year a statement giving the extent of commercial exploitation in India of the patented invention for all granted patents. This is called a working report.
» Filing a statement of working (Working Report) for all granted patents is NOT A NEW requirement and has always been a part of the Indian Patents Act 1970 (since 1975) and our office has been filing such statements on behalf of our clients and associates since 1976.
» The above provision of the Indian Patents Act came into effect from 1975. It is a peculiar and perhaps a unique controversial requirement of Indian Patent Law. We clarify below this provision and its implications:
» Filing of a Working Report is necessary only after a Patent is granted.
» According to Section 146(2) read with Rule 131 of the existing Patents Act and Rules, a statement of working of the patented invention on a commercial scale in India has to be filed by the 31st of March each year, for the calendar year (January to December). Working report, however, has to be filed for all granted Patents, even if granted in the last six months. The onus of filing a Working Report lies on the Patentee.
» There is no provision in law for extension of time for filing a statement later than 31 March 2011.
» Non-filing of Working report does not result in revocation 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 Ten Hundred Thousand Indian Rupees (Twenty five thousand 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).
» There are no known cases of either any such fines being imposed or of imprisonment.
» The imposition of the fine under Section 122(2) is not strictly enforced. However, in some situations, competitors and rivals have used this route to harass patentees.
» It is our opinion that it will be very different for the Patent Office to enforce these provisions against foreign Patent holders.
» Under Indian Patent Law, a working report may be filed, duly verified by the patentee, his licensee or his authorised agent.
» We have been sending Working Report Reminders to all our clients, renewals of whose Patents are under our care.
» The only change in the situation, is that the Patent Office has now issued a Notice asking all Patentees to fulfil this obligation for the year 2010 by the due date of 31 March 2011.
» The information submitted in the working report (Form 27) is not as yet available in any documented manner and there are no public records available currently for previous years. However, these are available to the public by request.
» In the past 25 years, information regarding Working Reports was published in the Patent Office Journals once or twice, a very long time ago. This information consisted mostly of lists of non-worked patents. There is a possibility that the Controller General is reviving this practice, however we have not received any conclusive information with regard to this. Kindly note that according to Section 146 (3), the Controller may publish the information received by him under Section 146(1) and 146(2) in any manner prescribed. There is no provision to request for non-publication of the Working Report.
» If you wish to abandon your patent in 2011, there is no need to file a working report for 2010.

For any further clarifications and for instructions for complying to the above provision, please do not hesitate to write to us at patents@dpahuja.com