Patentees and licensees need to file an Annual Statement giving the extent of commercial exploitation in India of patented inventions for all granted live Indian patents. This statement is known as a Working Report.
“Working” of an invention can include various activities, including but not limited to manufacturing, importing or using the invention in India. Additionally, non-commercial use, such as trials or the distribution of samples can also be considered as “working of a patent”.
While it is necessary to file a Working Report even if there has been no commercial exploitation of the patent in India, it is acceptable to file a report to indicate that the invention has not been worked in the relevant period. Although in that case, it is necessary to provide a brief reason for not working the patented invention and the steps being taken for working of the invention (for example, a patentee or licensee who has not worked an invention in India might provide the information that “Market analysis is in progress”, as both a reason for not working the invention and as an indication of the steps being taken).
Previously, the deadline for filing Working Reports was 31 March each year. Going forward, the deadline will move to 30 September each year. However, the period that the Working Report should cover is that of the financial year, i.e. from 1 April to 31 March.
Accordingly, for all patents granted prior to 1 April 2020, a Working Report must be filed by 30 September 2021 for the period 1 April 2020 to 31 March 2021. For patents granted after 1 April 2020, the first Working Report will have to be filed by 30 September 2022 for the period 1 April 2021 to 31 March 2022. Where a patent is licensed, each licensee must file an individual Working Report.
In completing a Working Report, the following information is required:
1. The approximate value/revenue accrued in India to the patentee/licensee where the patent is “worked” in India
2. Brief comments on the nature of working of the patent
3. If the invention has been “worked” in India whether this working is by way of use, or by way of manufacturing or importing into India
In addition, the Working Report Form now allows a single submission for related patents (for example, where several patents relate to a single product), wherein the approximate revenue/value accrued from a patented invention cannot be derived separately from the value accrued from related patents and all such patents are granted to the same patentee.
We manage quite a number of Indian patents and patent applications for our direct clients, using correspondent Indian patent attorney firms, and are happy to discuss issues around obtaining and maintaining patent protection in India.