Alert 350 - India - File ‘statement of use’ or face penalties cautions Indian Patent Office


The Indian Patent Act clearly lays down that the objective of the Patent Act is not only to encourage inventions but also to ensure that they are worked in India on a commercial scale that is reasonably practicable without undue delay. 

In line with this policy, Section 146 of the Patent Act requires that every patentee and/or licensee must provide at regular intervals (every six months) a statement of the extent to which an invention has been worked in India.

In practice, this provision is not enforced and most patentees and licensees do not submit these statements.  To an extent, the statements are cumbersome to file given that the relevant form requires the patentee and/or licensee to provide:

1) information as to the quantum and value of goods produced, whether manufactured in or imported into India;
2) information as to the licences and sub-licences granted during the year; and
3) a statement whether public requirement for the invention has been met partly/adequately/to the fullest extent by offering the product at a reasonable price.

If the Patent has not been worked, the patentee must provide reasons and list out the steps taken for working of the invention.

Notification of 24 December, 2009
On 24 December, 2009 the Controller General of Patents issued a notification that clearly states that the provisions of Section 146 of the Patent Act must be complied with by all patentees and/or licensees before 31 March, 2010.  In other words, ‘statements of use’ as described above must be filed by the patentees and/or licensees within the prescribed deadline.  Failure to comply will attract a fine, which can be up to US$23,000 (approximately).

Our Comment
Patentees and licensees are advised to audit their portfolio and comply with the Patent Office directive to avoid a last minute rush and penalties. At this stage, bearing in mind the deadline, we would advise patentees and licensees to comply with the requirement by ensuring that at least a statement is filed, providing basic information as to the working of the patented invention, i.e. whether or not it is being used in, or imported into, in India. This should avoid penalties and can be followed with a detailed statement before the end of year.

For more information, email india@iprights.com.