Working requirement in India
I) Working requirement in India
The section 146 of Patent Act provides that :
- While the patent is pending, the Office may require in writing a patentee or licensee (exclusive or non-exclusive) to submit some information or periodical statement about the commercial exploitation of the patent in India, within 2 months from the date of such notice, unless stated otherwise
- Without prejudice to the above, the patentee or licensee shall periodically submit the above information
- The information described above may be published by the Office
Currently, the guidelines relating to the enforcement of that provision are not yet published by the Office, but will come soon.
However, in light of the applicable law and the information provided by the Office, it is appropriate to patentees and licensees (exclusive or non-exclusive) to declare whether their patents have been used or not, thanks to the Form 27. If appropriate, the latter must clarify about the scope of commercial exploitation of the patent in India.
In accordance with legal provisions, for each patent, a separate statement must be submitted every year within 3 months of the end of the calendar year, i.e. before March 31 of the following year.
Failure to comply with this obligation shall be punishable with a fine of up to USD 20,000. Besides, in case of a false statement, offenders are subjected to a fine and/or imprisonment which may extend to 6 months.
II) Recent events about working requirement
In 2015, the Indian Government was sued on the ground that it failed to ensure the above statement obligations. This is the reason why the Court was asked to enjoin the authorities to enforce such an obligation.
The arguments raised in support of its legal action are that the nonfulfilment of patentees and licensees obligations contravenes the intent of the law and public interest, because the public, and in particular manufacturers, has no information about the exploitation of the patent in force in India.
The Court was informed that between 2012-2013, out of 43 920 patents in force, form 27 was filed only for 27 946 patents : 36% of patentees were not fulfilling this requirement.
Before this year, the Indian patent Office had not actively monitored the submissions made by the patentees and licensees.