This post examines the issue of the Statement of Working of Patents from the perspective of the statute and the functioning of the patent office. The relevant statutory provisions are set out below.<\/p>\n
\nSection 146 \u2014 Power of Controller to call for information from patentees<\/strong><\/p>\n
(1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice.<\/p>\n
(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.<\/p>\n
(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) in such manner as may be prescribed.<\/p>\n<\/blockquote>\n
\nRule 131 \u2014 Form and manner in which statements required under section 146(2) to be furnished<\/strong><\/p>\n
(1) The statements shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licencee or his authorized agent.<\/p>\n
(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.<\/p>\n
(3) The Controller may publish the information received by him under sub-section (1) or sub-section (2) of section 146.<\/p>\n
Rule 122 \u2014 Refusal or failure to supply information<\/strong><\/p>\n
(1) If any person refuses or fails to furnish\u2014<\/p>\n
(a) to the Central Government any information which he is required to furnish under sub-section (5) of section 100;<\/p>\n
(b) to the Controller any information or statement which he is required to furnish by or under section 146,<\/p>\n
he shall be punishable with fine which may extend to ten lakh rupees.<\/p>\n
(2) If any person, being required to furnish any such information as is referred to in sub-section (1), furnishes information or statement which is false, and which he either knows or has reason to believe to be false or does not believe to be true, he shall be punishable with imprisonment which may extend to six months, or with fine, or with both.<\/p>\n<\/blockquote>\n
Statutory Framework for Statement of Working<\/h2>\n
Section 146(1) gives the Controller of Patents the discretion to call for information on the working of patents from patentees, and Section 146(2) mandates the filing of statements by patent holders. The term prescribed under Rule 131 is once every calendar year. If a patent holder does not file the statement, Section 122 imposes a fine of up to ten lakh rupees.<\/p>\n
The patent statute mandates the filing of statements of working and imposes punishment for non-filing. Section 146, which requires the filing of statements, reads in the relevant part that such statements must be furnished “as to the extent to which the patented invention has been commercially worked.” On a literal statutory interpretation, this means that a statement must be filed if an invention is commercially worked, specifying the extent of such working. If an invention is not commercially worked, the question of whether a statement is still required turns on whether a literal or non-literal interpretation of Section 146(1) is adopted.<\/p>\n
The PIL and Its Prayers<\/h2>\n
The prayer in the public interest litigation under consideration was as follows:<\/p>\n
\n“\u20261. To strictly enforce compliance with Section 146(2) read with Rule 131(1) of the Patents Act, 1970 and Rules thereunder in relation to disclosure of information on commercial working of patent by every patentee and licensee;<\/p>\n
2. To initiate proceedings under Section 122(1) of the Patents Act, 1970 against errant patentees and licensees who have failed to comply with the mandatory requirement of Section 146(2) read with Rule 131(1) of the Patents Act, 1970 and Rules;<\/p>\n
3. To issue notices under Section 146(1) of the Patents Act, 1970 to patentees and licensees to furnish true and complete information in relation to incomplete disclosure of information on commercial working of the patent;\u2026”<\/p>\n<\/blockquote>\n
Analysis: Discretion of the Patent Office<\/h2>\n
From the perspective of a writ of mandamus and public interest, the question arises whether the discretion currently vested in the patent office with respect to the statement of working should be removed, and whether the patent office should be mandated to acquire statements for all patents and impose punishment accordingly.<\/p>\n
If the discretion is taken away, the patent office would be required to:<\/p>\n
\n
- Monitor and verify thousands of granted patents for filing of statements of working every year;<\/li>\n
- Check the appropriateness of each statement of working;<\/li>\n
- Send notices if statements are not filed in time or if the statements do not contain appropriate information;<\/li>\n
- Handle petitions, applications and hearings with respect to non-filing, delay in filing, and insufficiency of information;<\/li>\n
- Impose punishment if statements are not furnished; and<\/li>\n
- Take several other necessary steps to implement the process.<\/li>\n<\/ul>\n
Practical Repercussions<\/h2>\n
The patent office already struggles to process patent applications due to a shortage of resources and faces a significant backlog. Imposing additional obligations with respect to statements of working on an already burdened institution may worsen the situation rather than serve the underlying public interest.<\/p>\n
India’s immediate priority from a patent perspective should be on reducing unnecessary burdens on the patent offices and making them more efficient in processing applications. While it may be beneficial to impose an obligation on the patentee or licensee to submit the statement of working by providing appropriate guidelines, the patent office should not be compelled to undertake a fact-finding exercise for all granted patents to verify whether the information furnished is true and complete.<\/p>\n
A more proportionate approach would be to ensure that the burden of compliance rests with the patentee, with the patent office retaining its discretion to verify and pursue non-compliance where there is actual and substantial public interest involved, rather than as a matter of administrative routine for all patents.<\/p>\n
Disclaimer<\/h2>\n
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.<\/p>\n","protected":false},"excerpt":{"rendered":"
This post explores the statutory requirements for the statement of working of patents in India, assessing the legal provisions and practical challenges faced by the patent office. It provides an analytical perspective on compliance, resource implications, and public interest concerns within the Indian patent framework.<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"iawp_total_views":49,"footnotes":""},"categories":[6,14],"tags":[1241,7447,609,7435,12945,7434,494],"class_list":["post-26815","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-patents","tag-controller-of-patents","tag-patent-office-india","tag-patents-act-1970","tag-public-interest-litigation","tag-rule-131","tag-section-146","tag-statement-of-working"],"_links":{"self":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/26815","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/comments?post=26815"}],"version-history":[{"count":4,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/26815\/revisions"}],"predecessor-version":[{"id":149877,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/posts\/26815\/revisions\/149877"}],"wp:attachment":[{"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/media?parent=26815"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/categories?post=26815"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.bananaip.com\/intellepedia\/wp-json\/wp\/v2\/tags?post=26815"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}