The Government of India has published a draft Form 27 for comments under the Draft Patent (Amendment) Rules, 2019. The proposed amendment issued by the Department of Industrial Policy and Promotion (DIPP) under the Ministry of Commerce and Industry clarifies the timelines for filing Form 27 as well as revised provisions for providing verified English- language translations of priority documents.
Form 27 is a unique requirement in Indian Patent law, where patentees must periodically submit details of the commercial working of their granted patents in India. The Form has remained unchanged since 1970 and has been in desperate need of updation for decades. The lack of clarity in its design, that has led to much confusion and ambiguity during filing even led to the filing of a public interest litigation by Shamnad Basheer (W.P.(C) 5590/2015, CM No. 10090/2018). Following the litigation, and on directions from the court, the Office of the Controller General of Patents, Designs & Trademark invited comments from stakeholders to amend Form 27 and conducted stakeholder meeting in March 2018. It has taken more than a year for DIPP to put out the revised new Form 27, based on all these inputs and discussion.
The table below gives a comparison of the current Form 27 and the draft Form 27 now proposed:
| Current Form 27 | Draft Form 27 |
| If worked, quantum and value (in Rupees), of the patented product:
(i) Manufactured in India (ii) Imported from other countries (give county wise details) |
If worked, details:
(a) where the subject matter of the patent is a product, approximate value accrued in India tothe patentee(s)/ licensee furnishing the statement from that product through: (a1) Manufacturing in India(in INR) (a2) Importing into India (in INR) (b) where the subject matter of the patent is a process, approximate value accrued in India tothe patentee(s)/ licensee furnishing the statement from the product(s) obtained directly bythat process through: (b1) Manufacturing in India (in INR) (b2) Importing into India (in INR) |
| — | Where the value accrued from a particular patented invention cannot be derived separately from the value accrued from related patents, and all such patents are granted to the same patentee(s), the details of all such patents, including the patent numbers, shall be provided in part (c) below, and value accrued from all such patents will be provided in (a) and/ or (b) above.
(c) Provide details in respect of (a) and/or (b) above |
| The licences and sub-licences granted during the year: | — |
| If not worked; reasons for not working and steps being taken for working of the invention: | If not worked, details with justification for not working |
| State whether public requirement has been met partly/ adequately / to the fullest extent at reasonable price: | — |
| Timeline for Filing Form 27:
Currently, a patentee or a licensee must furnish information regarding commercial working of their patent in Form 27 every calendar year within three months of the end of each year i.e. on or before March 31st of the following year. The present rules are silent as to when the first Form 27 is required to be published. |
According to the proposed rules, a Patentee is not required to submit a Form 27 for the year in which the Patent was granted and should start submitting Form 27s from the subsequent year. March 31st remains the due date for filing. |
| Amendment to Rule 21(2) has been proposed to make this rule consistent with Rule 51bis.1 (e) of Regulations under the PCT and clarifies that English translation of priority application is only required in cases specified under the PCT and not in all cases. |