On March 15, 2024, the Ministry of Commerce and Industry notified the Patents (Amendment) Rules, 2024 (“Amended Rules”), introducing significant changes to Indian patent practice and procedure. These amendments, which have already come into effect from the date of publication, March 15, 2024, mark an important shift in the compliance obligations of patentees and licensees in India, particularly concerning the submission of the Statement of Working (Form 27).
The Fundamental concept of Form 27
The Indian Patents Act, 1970, specifically Section 83, which highlights that patents are awarded to promote inventions and guarantee that these inventions are worked in India on a commercial scale, is the main source of the necessity to submit Form 27. The ultimate objective is to provide the public with affordable access to the advantages of patented inventions. Thus, filing Form 27 is required by law in order to oversee and encourage the efficient use of patented inventions in India.
Who Can Sign Form 27?
To fully execute their patent rights in India, all patent holders and licensees must ensure that Form 27 is duly signed and submitted. The form can be signed by the patent holder, licensee, or their designated representative. Compliance with this requirement is essential for maintaining the legal standing of the patent and demonstrating the extent to which the patented invention has been worked on a commercial scale in India. Proper submission of Form 27 allows the patentee or licensee to meet their statutory obligations under the Indian Patents Act, 1970, specifically under Section 146(2) and Rule 131 of the Patents Rules, 2003. This ensures that the patent rights are exercised to their fullest potential, reinforcing the patentee’s or licensee’s ability to protect and enforce their intellectual property in India.
Key Amendments to the Statement of Working (Form 27)
One of the most notable changes introduced by the Amended Rules pertains to Rule 131(2), which governs the submission of Form 27. Previously, patentees and licensees were required to file Form 27 annually for each financial year (FY). However, under the revised Rule 131(2), Form 27 must now be submitted once every three financial years. This change reduces the frequency of filing, thereby easing the administrative burden on patentees and licensees. Another significant change in the amended Form 27 is that patentees must state whether the patent is available for licensing. If yes, the patentee may also indicate on the form if they would be interested in receiving communications from persons interested in such licenses, and provide contact details accordingly.
Detailed Changes in Form 27
Extended Filing Period
The amended rule requires the Statement of Working to be submitted once in every three financial years, starting from the FY immediately after the patent was granted. This is a significant relaxation from the earlier requirement of annual submissions. In case of delay, the filing can be condoned upon a request made in Form 4, with a penalty fee of INR 10,000 per month for a delay of up to three months.
Simplification of Information Disclosure
The new Form 27 focuses on simplicity, requiring only basic information to be provided. This contrasts with the previous version, which demanded more detailed disclosures, including country-wise import details and specific revenue figures.
Conclusion
The amendments to Form 27 and the broader changes introduced by the Patents (Amendment) Rules, 2024, reflect the Indian government’s commitment to streamlining patent procedures while maintaining the principles enshrined in the Indian Patents Act. By reducing the frequency of filings and simplifying the required disclosures, these amendments are likely to ease the compliance burden on patentees and licensees, encouraging more efficient use of patented inventions in India. As these changes come into effect, it is crucial for all stakeholders in the patent system to familiarize themselves with the new requirements to ensure continued compliance and to fully leverage their patent rights in India.
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