The heavy burden of a peculiar requirement
Most of the patent offices across the globe don’t ask for such details, but every Indian patentee or licensee needs to provide information related to the commercial exploitation of its patents on form 27.
Under section 146(1) of the Indian Patents Act, a working statement needs to be furnished when the controller requests it. The statement must also be provided on a voluntary basis in respect of each year, under section 146(2). The present form 27 requires the following information:
i) Whether the patented invention is being worked or not.
ii) If not, they must provide the reasons why not and what steps have been taken to exploit the invention.
iii) If yes, then the amount and value (in rupees) of patented product manufactured in India, and imported from other countries. If the patent-protected product has been imported from multiple countries, the patentee or licensee must also provide these details.
iv) The licences and sublicences granted during the year.
v) A statement that the public requirements, as defined in section 84(7), with respect to the patented product have been met partly or adequately or to the fullest extent at a reasonable price.
Changes ahoy
The Patent Draft Rules 2019 proposed a new form 27 which eliminates some of the previously required information, such as the amount of patented products, licences/sub-licences granted during the year, statements about meeting public requirements, and country-specific details in the case of importation from multiple countries.
However, the proposed form 27 also introduces several new details, such as approximate value accrued in India (in Indian rupees) to the patentee(s)/licensee from manufacturing and importing the product into India. The proposed form also provides an option to submit consolidated information for a pool of patents.
The form also lists separate sections for product and process patents and the respective value accrued from them. However, there is no such thing as a product patent or a process patent, according to the Indian Patents Act. A single patent may have product claims as well as process claims which are directed towards the common inventive concept. This practice is very much allowable as per section 09.03.08 of the latest manual of patent office practice and procedures.
