About the author
Kate Hickinson is a partner at Appleyard Lees IP LLP. Kate is experienced in working with clients to help them to identify the best ways to protect their inventions. In the pharmaceutical area, Kate has experience in filing and prosecuting patent applications directed to new chemical entities, chemical processes, formulations, solid forms and combination therapies, as well as experience of SPCs and data exclusivity.
Indian patent law requires all patentees to file an annual Statement of Working, by means of a Form 27. This Statement sets out the extent to which the patented invention has been worked (or not) on a commercial scale in India.
Previously there was an annual deadline of 31 March (i.e. three months from the end of a calendar year) for filing the Form 27. New rules came into force on 19 October 2020 that changed the annual deadline to 30 September (i.e. six months from the end of the Indian financial year of 1 April to 31 March).
Thus, presently a Form 27 needs to be filed for all relevant Indian patents before 30 September 2021 to cover the period 1 April 2020 to 31 March 2021. Indian attorneys have advised that there is no need to file a Form 27 for the period 1 January 2020 to 31 March 2020.
The new rules have clarified when the first Form 27 has to be filed, by stating that the Form needs to be filed from the financial year commencing immediately after the financial year in which the patent was granted. Therefore, there is no need to file a Form 27 in the year in which the patent is granted.
Under the new rules, it is necessary for every patentee and every licensee (exclusive or otherwise) to file a Form 27. Previously a single Form 27 could be filed by all parties, including all the patentees and licensees jointly. Thus, every licensee must now file a separate form and the patentee must ensure that all licensees are aware of this requirement (and file the form in time).
In addition to the above changes, a new Form 27 has been issued. The new Form encompasses some significant changes as follows:
• It is now possible to file a single form covering multiple patents belonging to the same patentee if the approximate revenue/value accrued from a particular patented invention cannot be derived separately from that accrued from related patents. In this case, the multiple patents must be related and belong to the same patentee. Advice may be needed in the case of multiple patents belonging to the same “corporate group” that may exist in the name of different subsidiaries of the group.
• Only an approximate revenue/value accrued in India must be provided (although there is still a distinction between manufacturing in India and importation into India)
• The new Form has been simplified and does not require the patentee to provide:
– details of licenses and sub-licenses;
– details of importation (only the approximate value is needed);
– a statement whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price.
If the Form 27 is not filed, or is filed late, then this can result in a financial penalty or even (in some cases) imprisonment. Additionally, failure to file the Form 27 can make the patent in question vulnerable to abandonment or revocation, and could lead to an eventual loss of rights.