Navigating Form 27 for Patentees and Licensees: Insights into the Post 2024 Amendments

11th January, 2025 - 6:45 am Categories: Patent Litigation 0 Comments

Understanding Form 27

Form 27 is a very important document in the Indian patent system, through which details regarding the commercial working of a patented invention are given. Under the old system, the patentees had to file Form 27 every year, relating to whether the invention was worked in India, the manner of its working, and whether it was commercially exploited. This was to be filed every year to ensure that patents serve their public purpose: encouraging innovation and making new technologies available.

While this helped to prevent “hoarding” of granted patents and assured the public of access to such inventions, this requirement ultimately became cumbersome and often onerous to administer, particularly by small patentees lacking resources to monitor and report on commercialization of their invention.

Important Changes in the Patent Amendment Rules, 2024

The Patents Amendment Rules, 2024, provide for some important changes to the filing of Form 27 to ease the process of reporting by patentees:

1. Filing Interval Extended to Three Years: Thus, patent owners will be required to file Form 27 once every three years instead of every year. This reduces the frequency of filing and hence the time spent on such formalities by a patentee will be reduced, leaving more time for the actual acts of inventing and commercializing. More importantly, the year of grant of the patent is excluded from the filing cycle, giving the patentees adequate time to determine the commercial status of their inventions before filing reports.
2. No Filing in 2024: According to the new patented calendar, the patent has not been obtained in 2024 to submit form 27. The first Form 27 for patents issued before March 15, 2024 must be filed by September 30, 2026. For patents issued on or after March 15, 2024, the first Form 27 must be filed by September 30, 2027. This grace period gives patent owners time to adjust to the new filing requirements. Patents granted prior to March 15, 2024 will not require Form 27 filing until 2026 in order to provide additional time to accommodate these patents in the new filing schedule without immediate pressure to file annually.
3. Excluding the Year of Grant: The year in which the patent grant is obtained shall not be taken into the filing cycle. For example, the very first Form 27 submission may not be necessitated if the date of grant in 2024 so as to begin after September 30, 2027 a three-year intervening period for the applicant to be able to provide information concerning the working of the patent.

The amendments bring a number of key benefits to the patent holders, including:

• The major benefit is that the frequency of reporting is reduced. The patent holders will report on Form 27 once every three years instead of annually. This reduces the administrative load and frees the patent owners to be more focused on innovation and business development.
• The three-year reporting cycle gives more time to the patentee to evaluate the marketability as well as the commercial exploitation of their inventions before filing reports. This is especially helpful for patents that are still in an early stage of commercialization or those that require longer periods of development.
• The extended reporting window and exclusion of the year of grant from the filing schedule have made the system more user-friendly. The new rules do not pressurize patentees into rushing towards filing annual reports, which at times are incorrect or incomplete.
• The decision not to require filings of Form 27 in 2024 gives patent holders a temporary reprieve. This will give sufficient time for the patent holders to understand and adjust to the new filing schedule, hence reducing immediate compliance stress.
• The introduction of easy filing will create more incentive for the patentees to develop and exploit the invention rather than filling up paperwork. The focus, thus might create a more vibrant and innovative patent landscape in India.

Impact on Stakeholders and Patent Ecosystem

These reforms have been embraced broadly by various stakeholders in the country’s patent ecosystem. A decrease in compliance for all patent agents, enterprises, startups, and independent inventors promises to have tremendous positive influence. For instance, minor business concerns and lone inventors will find a new, three-year periodic cycle not burdensome; hence, it gives one flexibility to track commercial employment of its patent in many ways.

The previous yearly filing requirement was excessively burdensome, particularly on SMEs and individual inventors who may not actively engage in large-scale commercialization of their inventions. Now, under the new regime, they would have further period to review the use of their patent and make accurate reports.

In addition, the re-alignment of the Indian patent system to global trends in reducing administrative burdens makes it even more attractive for international patent holders and investors. Such reforms will enable India to be globally competitive as a hub of innovation and protection of intellectual property and thus attract international collaborations and investments with more ease.

Guidance for Compliance

To assist the patentees to interpret the new rules, the Indian Patent Office has also issued a detailed FAQ. This guide will clearly outline when and how Form 27 should be filed, what follow-up steps must be taken to achieve the updated rules, how licensees and assignees must report, and what reporting should be done in those cases where the patented invention is at commercialization stage.

CONCLUSION

The 2024 Amendments to the Patent Rules represent a significant change in the Indian landscape. By increasing the filing interval of Form 27 from one year to three years. This reduces the communication burden of patent holders. This change is expected to simplify the report process, promote innovation, and make the Indian patent system more accessible. This move will ensure that the patent ecosystem is efficient, user-friendly and globally competitive, allowing patent owners to focus on commercial development.

Author: H.N.Mallika, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

1. https://www.ipindia.gov.in/writereaddata/Portal/IPORule/1_83_1_Patent_Amendment_Rule_2024_Gazette_Copy.pdf
2. https://ipindia.gov.in/writereaddata/Portal/News/1001_1_Final_FAQs_Form-27_26thAugust2024.pdf