Requirement of the Indian Patents Act
Section 146 of the Indian Patents Act empower the Indian Patents Controller, upon request, to seek annual “Statements of Working” from the patentees/licensees to a what extent the patented invention has been commercially worked in India.
Section 146: Power of Controller to call for information from patentees.
(1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice to within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.
(2) Without prejudice to the provisions of the sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked in a commercial scale in India.
(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed.
When to file statement of working
As per Section 84 of the Indian Patents Act, any patent that has not been worked for 3 years in India after the date of grant of a patent can be subject to a compulsory license. Hence, it is mandatory for the Patentee to submit the statement of working annually after the grant of a patent.
As per Section 131, the statement of working should be furnished on prescribed Form (Form 27) and must be voluntarily provided to the Patent Office within 3 months of the end of each year i.e. by 31 March of subsequent year.
Information required to be submitted by the Patentee in prescribed Form 27 :
Patentee need to submit below information in a prescribed Form 27 :
- Whether the patented invention has been worked or not worked;
- If not worked, reasons for not working and steps being taken for the working of the invention.
- If worked, the quantum and value (in rupees) of the patented product;
- Manufactured in India;
- Imported from other countries (Country-wise details must be furnished);
- The licenses and sub-licenses granted during the year;
- Whether the public requirement has been met partly/adequately/to the fullest extent at a reasonable price.
Repercussion of non-filing or submitting false statement of working
The repercussion of non-filing or submitting false statement of working will be:
- Patentee will be liable to pay a fine on refusing to submit the information.
- Provision of imprisonment, if false information or statement is furnished.
- Patent will be revoked and compulsory License will be granted to the person interested.
As per Section 122 of the Indian Patents Act :
(1) If any person refuses or fails to furnish-
(a) to the Central Government any information which he is required to furnish under sub-section (5) of section 100;
(b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.
(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.
Section 84(1)(c) of the Indian Patents Act : –
(1) At any time after the expiration of three year from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory license on patent on any of the following grounds, namely:-
(c) that the patented invention is not worked in the territory of India.”
