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Revised Patent Rules in India (2020): Submission of Statement of Working (Form 27) (December 8, 2020 )

 

Dec 8, 2020



Revised Patent Rules in India (2020): Submission of Statement of Working (Form 27)


 

The Indian Ministry of Commerce and Industry, Department for Promotion of Industry and Internal Trade (DPIIT) published the Patents Amendment Rules (2020) on October 19, 2020, and one of these rules is as follows:

Rule 131: Filing of Annual Statement of Working (Form 27)

The amendment to Rule 131

(1) Before the amendment:

Patentees and licensees of Indian patents are required to submit an annual statement of working of the patented invention, also referred to as “Form 27” or “SoW” for its form number or abbreviation.

Since it was required to submit the Statement of Working (SoW)  for the period from January 1 to December 31 of a calendar year by March 31 of the following year  for our clients who entrusted us to handle the annuities payment for their Indian patents, we invited them to submit their annual  SoW from the end of a year to the beginning of the following year.

(2) After the amendment

 (2-1) Change  to fiscal year and Extension of deadline for submission of SoW

Under the new rules, the  year involved has been changed from calendar year (January 1 to December 31) to Indian fiscal year (April 1 to March 31 of the following year), and the deadline  for submission of SoW is now within six months from the expiry of each fiscal year, i.e. within six months from March 31 of the end of the fiscal year. Therefore, the SoW for the previous year must be submitted by September 30 of the following year. In this regard, we will be sending invitations  to the clients who have entrusted us to handle the annuities payment for their Indian patents to submit their annual  SoW  on or after April 1 after the end of the fiscal year.

In addition, it is no longer necessary to submit the annual SoW during the fiscal year in which the patent is registered, and there is no ambiguity as to when the first SoW should be submitted for a newly registered Indian patent. For example, if an Indian patent is registered during the current fiscal year, i.e., April 1, 2020 to March 31, 2021, the first SoW will have to be submitted by September 30, 2022 (see the table below):

 Time of registration

From April 1, 2020 to March 31, 2021

 Period of working for 1st SoW

From April 1, 2021 to March 31, 2022

 Deadline for submission of the 1st SoW

September 30, 2022

The timeline of the time of registration, the period of working , and the deadline for submission of SoW after 2021 is shown in the chart below. The words “Registration”, “Working” and “Submission” have the following meanings:

Registration: Patents that are granted during this period.
Working: Period of working of patents on the left for which SoW is required.
Submission: Period for submission of SoW

Timeline for Statement of Working (click here if the diagram does not open)

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Please note that if the period of working were from April 1, 2020 to March 31, 2021 of the fiscal year for the patents granted prior to March 31, 2019 in Timeline Schedule for 2021 SoW, the period from January 1, 2020 to March 31 of the same year under the previous calendar year system would be excluded from the period of working. So, this period is added to “Timeline Schedule for 2021 SoW”,


(2-2) Simplification of Form 27

The new Form 27 has been simplified and the main changes are as follows:

  • The patentee only needs to provide an estimate (which does not need to be exact) of the revenue amount or value generated from manufacturing or imports in India.

  • If the estimated revenue or value generated from a particular patented invention cannot be determined separately from the related patents, information about multiple related patents may be submitted together for SoW, provided that all of the patents are granted to the same patentee.

  • If the patentee wishes to describe the working or non-working of the patent, a 500-word column is provided.

  • All patentees and licensees are required to submit a Form 27 for a particular patent (or series of related patents owned by one patentee). Joint owners may submit them together in a single Form 27.

  • An authorized agent may sign the Form 27 on behalf of the patentee or licensee.

  • It is no longer necessary for the patentee or licensee to make a statement about the patented invention being partially, adequately, or completely consistent with the public interest needs.

  • It is no longer necessary to report the number of patented products imported into or sold in India, only the total revenue or value of the patented invention in India is required. Therefore, the SoW will no longer disclose the unit price of the patented products and eliminates the need to report import details by country.