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Requirement for “Working the Patents in India” - Form 27

After having granted a Patent in India, one has to submit Form 27 on an Annual basis, which is essentially a Statement by the Patentee Regarding the Working of the Patented Invention on Commercial Scale in India. Submission of Form 27 is a requirement under Section 146 (2) of The Patents Act, 1970 requires every patentee and every licensee (whether exclusive or otherwise) to furnish information for the extent to which the patented information has been commercially worked in India. It is pertinent to note that a writ petition has been accepted by the Honourable High Court of Delhi in regard to “lack of clarity” of Form 27, secondly the Government of India has notified draft rules that attempt to amend the Form 27 language, however both these developments are ongoing while this article is being posted.

What is required to be stated in Form 27?

Answers to the following three questions are required to be stated in Form 27:

  1. Whether the patented invention has been worked or not worked?

    1. if not worked, the reasons for not working and the steps being taken for the working of the invention.

    2. if worked, the quantum and value (in rupees) of the patented product?

      1. manufactured in India;

      2. Imported from other countries along with the details of each country;

  2. The licenses and sub-licenses granted during the year;

  3. Whether the public requirement has been met, at a reasonable price either partly, adequately or to the fullest extent?

When is the Form 27 due?

The information or periodical statements should be furnished in respect of every calendar year within three months of the end of each year in normal circumstances and within two months whenever required by the Controller in the special circumstances. In present situation, all patentees and licensees need to provide information or periodical statements of the year 2015 and to be furnished with form 27 within 31st March 2016.

What happens if none or false information is submitted by way of Form 27?

Failing or refusing to supply information by a person which he is required to furnish by or under section 146 shall be punishable with fine which may extent to Ten lakh rupees (~USD 15,000). Also if the information provided under the Statement (Form 27) is false, there is a punishment with imprisonment up to six months, or with fine, or with both. Also non-working of patent in India can be a ground for revocation of the patent right in certain circumstances.

Case Laws Relating to Form 27:

Date of Order

Parties & Court

Key discussion

9th Mar 2012

 

Natco v. Bayer

Patent Office

Compulsory License Order

By referring to Form 27, The Patent Office found that Bayer did not import the drug at all in 2008 and only started importing it in small quantities in 2009 and 2010. Seeing that Bayer was not making the drug accessible to more people, Natco applied for a compulsory license under Section 84 of the Patents Act, 1970 which was then granted by the controller and upheld later by the Bombay High Court

8th Mar 1996

Franz Xaver Huemer vs New Yash Engineers

In this case the plaintiff who has registered patents in India in 1984 but has not used them in India cannot, in equity, seek temporary injunction against the respondent.

27th Jan 2010

Glaverbel S.A. versus Dave Rose

Delhi High Court

Form 27 was found insufficient to test whether there is an actual commercial working/ exploitation of Invention in India. Thus, the plaintiff when it files merely forms and an affidavit to depose the working is not able to qualify on the count of commercial working of the invention. …. The forms filed by the plaintiff do not clearly reveal commercial sales arising out of the sale of the plaintiff’s inventions in India.

10th Sep 2009

Strix vs. Maharaja Appliances

Delhi High Court

In this case court found that the submission that the Plaintiff has not worked its patent in India is also without merit. It is the Defendant’s own case that it was purchasing the product from the Plaintiff in the year 2005-2006 and when it found that the products were defective, it started importing the product from China.

9th May 2014

Sandeep Jaidka versus Mukesh Mittal

Delhi High Court

 

There has been complete non-use of the patented invention by the plaintiff and the same is evident from the FORM 27 filed by the patentee himself before the Patent Office.

9th Jan, 2015

Novartis vs Cipla

Delhi High Court

 

… requirement of law is limited to working the patent in India so that the same is available to public at large. It is not essential that the patent must be worked by manufacturing the patented product in India. The arguments of the defendant have no force that the rights conferred under Section 48 are subject to Section 83…The Act does not mandate that no patent protection would be granted to a patentee unless the local manufacture is undertaken.

 

Can I see some samples of Form 27?

Yes, the Patent office has published information received from patentees regarding working of patented inventions on commercial scale in India for year 2012/2013. The information can be retrieved from the following link: http://ipindiaonline.gov.in/workingofpatents/

 

Compiled by,

Abhijit Savadatti

Patent Associate

abhijit.savadatti@stratjuris.com