For foreign patent owners with granted patents in India, post-grant compliance obligations often receive less attention than prosecution strategy. One such obligation is the requirement to submit a working statement under Form 27. Although procedural in appearance, this requirement has practical implications for enforcement, licensing, and exposure to compulsory licensing.
The obligation arises under Section 146 of the Patents Act, 1970 read with the relevant Patent Rules. It requires patentees and licensees to furnish information regarding the working of the patented invention in India. The purpose is to ensure that patented inventions are made available to the public and are not merely held without commercial use.
Form 27 must be filed periodically for every granted patent in force in India. The current framework requires patentees to provide a statement indicating whether the invention has been worked in India during the relevant period. Where the invention has been worked, the patentee is required to provide details relating to the approximate revenue or value generated from the patented invention in India. Where it has not been worked, reasons for non-working must be disclosed.
For foreign patentees, the concept of “working” often requires clarification. Indian law does not restrict working to local manufacturing alone. Importation of the patented product into India may constitute working, provided that the invention is made available to the public on a commercial scale. However, mere existence of a patent without any commercial activity or availability in the Indian market is unlikely to satisfy the requirement.
The accuracy and completeness of Form 27 filings are important. Statements are part of the public record and may be examined in enforcement or opposition contexts. Inconsistent or vague disclosures can be used by third parties to question the patentee’s position, particularly in disputes relating to compulsory licensing or non-working of the patent.
From a risk perspective, failure to file Form 27 or providing incomplete information may attract penalties under the Act. More importantly, non-working or inadequate disclosure may strengthen a case for compulsory licensing under Section 84, where an interested party may seek a licence on the ground that the patented invention is not being worked in India or is not available at a reasonable price.
For foreign patent owners managing global portfolios, coordination becomes critical. Information required for Form 27 often resides with commercial teams rather than legal teams. Revenue data, import figures, and licensing arrangements must be tracked and aligned with the disclosure made before the Indian Patent Office. In large portfolios with multiple patents and licensees, this can become an operational challenge.
Another aspect that requires attention is the interpretation of “value” or “revenue” associated with the patented invention. Where the patented feature forms only a part of a larger product or system, determining the appropriate disclosure requires careful assessment. Overly broad or unsupported figures may raise questions, while underreporting may affect credibility.
Foreign patentees should also be mindful that Form 27 compliance is not a one-time obligation. It must be maintained throughout the life of the patent. Regular monitoring and timely filing are necessary to avoid procedural lapses.
In enforcement scenarios, working statements may be scrutinized to assess whether the patentee has made reasonable efforts to commercialize the invention in India. In licensing discussions, they may also influence negotiating positions, particularly where local availability and pricing are in question.
From a strategic standpoint, Form 27 should be viewed as part of overall patent lifecycle management in India rather than an isolated compliance task. Early alignment between legal, licensing, and commercial teams helps ensure that disclosures are accurate and defensible.
Working statement compliance in India reflects a broader policy objective of balancing patent rights with public access to technology. For foreign patentees, understanding and managing this requirement is essential to maintaining a strong and enforceable patent position in India.
For assistance with post-grant compliance and India patent strategy, please contact us at https://origiin.com/contact-us/. To understand the India PCT national phase procedure and broader compliance framework, please visit https://origiin.com/pct-national-phase-entry-india/.
