Be cautious of road ahead once patent is granted

Once a patent is granted, the patentee gets the exclusive right to make, sell, offer to sell or import the patented invention. The patentee is also authorized to restrain others from making, selling or importing without its consent.

However, these rights come with a few responsibilities for the patentee that are crucial to keep the patent alive. Two of these duties include paying the requisite fee for patent renewal well within time and providing proof that the patent has been worked in the specified jurisdiction. The latter requires that the patentee provide a statement to the authorities proving that the patent has been worked in a particular jurisdiction. This is needed to ensure that there is no abuse of monopoly by the patent holder.

Patent Act

Section 146 of India’s Patents Act requires every patentee or licensee of a granted patent to submit a statement to the Controller General of Patents proving the patented invention has been worked locally on a commercial scale. Form 27 has to be filed with the patent office giving statement on the working of the patent.

Form 27 requires a number of details, as set out below in part.

1. Whether the patented invention has been worked:

   a. if not worked: reasons for not working and steps being taken for the working of the invention;

   b. if worked: quantity and value of the patented product:

   • manufactured in India, or

   • imported from other countries;

2. Licences and sub-licences granted during the year;
3. Whether the public requirement has been met at a reasonable price partly, adequately or to the fullest possible extent.

The patent office issues an annual notification to all patentees and licensees reminding them to submit form 27. These statements on the local working of patents can be published by the controller for public viewing.

Manisha Singh Nair is a partner and Zoya Nafis is an associate at LexOrbis