This document provides information about working of patents in India. It discusses that patent owners are required to file Form 27 annually to disclose the extent to which a patented invention has been commercially worked in India. Failure to file or providing incorrect information can result in penalties. The objectives of requiring working statements are to ensure patents are used to benefit the public and to prevent misuse of patent rights. It also gives an overview of the case of Natco v. Bayer which involved the first compulsory license granted in India in the pharmaceutical sector.

1. Working Of Patents
in
India
Presented
By:
Prashik Vaidya

2. Contents-
• Questions and their answers
• Section 83: Working Of Patents
• Section: 146
• Form- 27
• Section 122: Refusal or Failure to supply information

3. Questions ?????
And
Answers….

4. Whatisaworkingstatement?
Under Indian Patents law, every patentee and
every licensee of a granted patent is required to
file a statement as to the extent to which the
patented invention has been worked on a
commercial scale in India.

5. Isworkingstatementrequiredtobefiledonlyforgrantedpatents?
Yes,
working statements are only required for granted patents.

6. Isitrequiredtobefiledannually?
Yes,
•It required to be filed annually in respect of all granted patents in
India.
•The time line to file the statement is March 31 every year for the
preceding calendar year.
•For instance, March 31, 2017 for the working of patent in 2016
in respect of all patents which were granted prior to July 2016.

7. IsthereanyFormprescribedforthisstatement?
Yes,
Form 27.

8. CanthisFormbefilledandfiledelectronically?
Yes,
•The Form can be filled and filed electronically.
If filed by a patent agent/attorney, the Form must be filed
electronically.
However, if filed by the patentee or licensee (having address in
India), it can be filed either electronically or by submitting a
physical copy with the Patent Office.
Foreign patentee or licensee would have to engage an Indian
patent agent/attorney).

9. IsworkingstatementrequiredtomaintainapatentinIndia?
No,
• Not filing of working statement does not affect the legal
status of a patent in India, as long as the necessary
annuities, required for maintaining the patent, are paid
within the prescribed period.
• AndPatentcan’tbeabandonedonfailuretofileaworkingstatement

10. DoesthepatentownergetnotificationifapatentgoesabandonedinIndiaforfailingtofilethe
StatementsofWork?
• No, a patent is not abandoned for failure to filing a working statement.
• Objective behind filing of working statement for a granted patent in India, is
to inform the public about the working or not working of patent.
•So that if it is not worked for 3 years from the date of its grant or the
reasonable requirement of the public with regard to the patented invention
is not met, then an interested 3rdparty can use that information to approach
the patentee to seek voluntary license to work the patent in India.
•And in case, the patentee refuses to license or exercise unreasonable
conditions for issuing the license, then that 3rdparty can approach the Patent
Office for issuance of compulsory license.

11. Whatistheconsequenceofnotfilingaworkingstatementforapatent?
Not filing of working statement may entail
imposition of a penalty up to ₹ 10 lakh (USD
25,000)

12. Whatistheconsequenceiftheinformationprovidedintheworkingstatementisincomplete,
incorrectorfalse?
Furnishing false information in the working
statement knowingly or having reasons to
believe it to be false or not true, may attract
criminal prosecution and punishment of
imprisonment up to 6 months or fine or Both.

13. WorkingOfPatents
Section 83:
This section incorporates the general principles
applicable to working of patented inventions

14. The following general principles are stated:
a) Patents are granted to encourage and ensure that inventions
are worked in India on a commercial scale and to the fullest
extent reasonably practicable without undue delay
b) Patents are not granted merely to enable an inventor to
enjoy monopoly over the patented article
c) Protected to ensure dissemination of technology and the
balance of rights between users and inventors

15. d) Patents do not impede protection of public health and
nutrition and should act as an instrument to promote public
interest especially in sectors of vital importance for the socio-
economic and technological development of India
e) Patents do not in any way prohibit Central Govt. in taking measures to
protect public Health
f) Patent rights are not abused by the patentee
g) Patents are granted to make the benefit of the patented
invention available at reasonably affordable prices to the
public

16. The points of this section clearly point out that a
statement of working of patented inventions is
important to prevent the patentee from
misusing the patent and depriving the public of
its benefits.

17. Section146:Powerofcontrollertocallforinformationfrompatentees
This section requires the patentee to submit information every
year with regard to the extent to which the patented invention
has been worked on a commercial scale in India.
Also enables the Controller to seek information from the
patentee, by providing a notice in writing, as to the extent to
which the patented invention has been commercially worked in
India.
The patentee must provide the information within two months
from the date of such notice or within such further time as the
Controller may allow

18. Form 27:
The Statement regarding the working of a patented invention is
required to be disclosed in Form 27. it requires the following
information:
1. Whether the patented invention has been worked or not
worked;
a) If not worked, the reasons for not working and the steps
being taken for the working of the invention.

19. b) If worked, the quantum and value (in rupees) of the patented
product;
i) manufactured in India;
ii) Imported from other countries (Country-wise details must be
furnished);
2. The licenses and sub-licenses granted during the year;
3. Whether the public requirement has been met
partly/adequately/to the fullest extent at a reasonable price.

20. HowActuallyForm-27lookslike

22. Section122:RefusalorFailuretosupplyinformation
Thisisthepenaltysection.
1.Anypersonrefusesorfailstofurnish
a)TothecentralGovt.
b)TothecontrollerU/S146

23. 2. He shall be punishable
• Failure to comply with Section 146(2) may make the patentee
subject to paying a fine which may extend to ₹ 10 lakh (USD
25,000).
•Providing false information may warrant imprisonment up to 6
months or fine or both.

24. •Statements provided by the patentee may be published by the
Controller for public viewing.
•Publishing the statement of working of patents ensures that the
public is made aware of how a patent is being used in India.
•If a patent is not used adequately, a third-party may make a claim
for compulsory licensing.
•If an invention is patented but the benefits of the invention do not
reach the society, the whole point of the patent system is negated.
•Working of patents ensures that patents are worked to their fullest
extent and that the benefits of an invention are distributed as widely
as possible.

25. Case Study
Natco v/s Bayer
It was the first case of compulsory licensing being obtained in
India in pharmaceutical field of discipline
Bayer obtained a patent on Nexavar
A pack of 120 cost Rs. 2.8 lakh INR

26. Indian generic pharmaceutical company
Natco filed an application with the Bayer Corporation for the
Voluntary license of the drug Nexavar (Sorafenib) with
reasonable commercial terms and conditions.
Received a license from the Drug Controller General of India for
manufacturing the drug in bulk and marketing in form of tablets
in April 2011.

28. Next…..
CompulsoryLicensingInIndia

29. ThAnK
YoU…