On 19 October 2020, the Government of India notified the Patent (Amendment) Rules, 2020, which, among other things, brought the first modern change to the Statement of Working. Patentees and licensees had for a long time been faced with answering the myriad ambiguous questions contained in the Form 27, and so, quite possibly owing to a direction from the Delhi High Court in Shamnad Basheer v. Union of India and Ors., the Government of India revamped the requirements under Form 27. The changes have been captured below:
| Requirements under Form 27 prior to the Patents (Amendment) Rules, 2020 | Requirements under Form 27 post the Patents (Amendment) Rules, 2020 |
| PROS | |
| A patentee would have to file a separate Statement of Working for each patent he holds. | A patentee can file a single Statement of Working for all related patents, i.e., all patents involved in a single product, subject to the fulfillment of certain criteria. * |
| In case of joint applicants, each patent holder would have to file a Statement of Working. | Joint patent holders can now file a single Statement of Working. |
| Quantum as well as value of the patented product in exhibiting proof of the working of the patent had to be submitted. | The Statement of Working now only requires the approximate value accrued in India. # |
| Patentees and licensees had to specify as to whether the "public requirement" of the patent had been met, based on ambiguous terms like 'partly or adequately', 'fullest extent', and 'reasonable price'. | The need for specifying the meeting of public requirement has been done away with. |
| The Statement of Working had to be filed for every calendar year, and within 3 months from the end of the calendar year, i.e., by March 31st. | The Statement of Working has to be filed for each financial year, and within 6 months from the end of the financial year, i.e., by September 30th. ^ |
| CONS | |
| Patentees and licensees could file a joint Statement of Working. | Every patentee and every licensee (exclusive or otherwise) will have to file a separate Statement of Working. However, patentees need not specify the licenses given out in a particular year. |
* – In order to qualify as related patents, the situation must be such that the (i) approximate revenue accrued from a particular patented invention cannot be derived separately from the approximate revenue accrued from the other related patents, and (ii) all patents have been granted to the same patentee(s).
# – However, patentees and licensees must still provide the differentiation in working through manufacturing in India, and importation into India. However, they no longer need to specify the country-wise details of importation.
^ – The new Rules clarify that the Statement of Working must be filed for the financial year immediately following the financial year in which the patent was granted. Ergo, if the patent was granted on 1st December 2020, the patentee would have to file the Statement of Working only for the next financial year onwards, i.e., for 2021-2022, and therefore the last date to submit the Statement of Working would be September 30, 2022.
Originally published February 18, 2021
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