Form 27: Everything a Patentee and Licensee Must Know About Statement of Commercial Working in India; Compliance Deadline: 30 September

 ABSTRACT

Form 27 is a statutory obligation under Section 146(2) of the Patents Act, 1970 requiring every patentee and licensee to file a statement of commercial working of the patented invention in India. With the Patents (Amendment) Rules, 2024 coming into effect from 15 March 2024, the filing frequency has changed from annual to once every three financial years. For most existing patents, the first consolidated deadline under the new regime falls on 30 September 2026. This article explains the legal framework, the revised filing timelines, who must file, what information must be furnished, the consequences of non-compliance (including the revised monetary penalties under the Jan Vishwas Act, 2023), the indicative professional fee structure for filing, and the documentary requirements that practitioners should gather from clients in advance of the deadline.

I.  Legal Framework and Purpose

Form 27 is not a voluntary disclosure — it is a statutory obligation under Section 146(2) of the Patents Act, 1970, read with Rule 131(1) of the Patents Rules, 2003, as amended. The provision empowers the Controller General of Patents, Designs and Trade Marks to require patentees and licensees to furnish information regarding the extent to which the patented invention is being commercially worked in India.

The rationale behind the requirement is rooted in the patent bargain: the State grants a limited monopoly in exchange for disclosure of the invention and the expectation that the invention will be worked within the country, thereby benefiting the Indian public. Where an invention is not worked or is inadequately worked, the Patents Act provides mechanisms — most notably compulsory licensing under Section 84 — to correct that imbalance. Form 27 disclosures provide the factual foundation for any such compulsory licence proceedings.

The Jan Vishwas (Amendment of Provisions) Act, 2023 amended Section 122 of the Patents Act to introduce monetary penalties for non-compliance, replacing the earlier criminal liability. This shift underscores the seriousness with which the legislature treats Form 27 obligations, while making enforcement more practical for regulators.

 

II.  Who Must File Form 27?

The obligation to file Form 27 rests on every patentee and every licensee in India. This includes:

•       Individual inventors holding a granted Indian patent

•       Companies, LLPs, partnerships, universities, and government bodies that are patentees

•       Exclusive licensees and non-exclusive licensees under a granted Indian patent

•       Foreign patentees whose inventions are protected by an Indian patent grant

 

Importantly, both the patentee and any licensee may file Form 27 independently and simultaneously for the same patent. There is no bar on multiple stakeholders filing separate statements. A patentee or licensee may also authorise a registered patent agent or attorney to file Form 27 on their behalf, provided a valid Power of Attorney (Form 26) is on record.

Where a patentee holds multiple patents that are related and granted to the same patentee(s), a single Form 27 may be filed covering all such related patents, thereby reducing the administrative burden.

 

III.  What Changed: The 2024 Amendment Rules

The most significant change introduced by the Patents (Amendment) Rules, 2024 (effective 15 March 2024) is providing option to opt from annual filings to a triennial (three-year) filing cycle. Under the previous rules, Form 27 was required to be filed annually, within six months of the close of each financial year. This proved burdensome, particularly for large patent portfolios. Annual filing of Form 27 is also available but filing every three years is more cost effective.

Under the amended rules, Form 27 can also be filed once in respect of every period of three consecutive financial years, beginning from the financial year immediately after the patent is granted, with the filing window opening on 1 April following the three-year period and closing on 30 September of that year.

 

Critical Rule:  The new triennial cycle applies prospectively from 15 March 2024. If a patentee failed to file Form 27 for FY 2021-22 or FY 2022-23 within the time limits prescribed under the earlier rules, those missed years cannot be clubbed into the new three-year block. The obligation for those years has lapsed and cannot be revived.

 

This prospective application means practitioners must carefully audit each client's filing history: any gap in annual filings prior to the amendment rules is effectively an irreversible non-compliance for that period and must be noted separately from current obligations.

 

IV.  Filing Deadlines: A Category-Wise Analysis

The filing deadline varies depending on when the patent was granted and when its three-year block commences. The table below consolidates the applicable deadlines for all patent categories:

 

Patent Category	3-Year Block	Base Deadline	Ext. (Rule 131(2))	Ext. (Rule 138)
Granted before FY 2022-23	FY 2023-24 to 2025-26	30 Sep 2026	31 Dec 2026	30 Jun 2027
Granted in FY 2022-23	FY 2023-24 to 2025-26	30 Sep 2026	31 Dec 2026	30 Jun 2027
Granted in FY 2023-24	FY 2024-25 to 2026-27	30 Sep 2027	31 Dec 2027	30 Jun 2028
Granted in FY 2024-25	FY 2025-26 to 2027-28	30 Sep 2028	31 Dec 2028	30 Jun 2029
Expired in FY 2023-24	FY 2023-24 only	30 Sep 2024	31 Dec 2024	30 Jun 2025
Expired in FY 2024-25	FY 2023-24 to 2024-25	30 Sep 2025	31 Dec 2025	30 Jun 2026

 

Note: Where a patentee or licensee does not avail the three-month extension under Rule 131(2), the outer limit for extension under Rule 138 is 31 March of the relevant year — not 30 June. Practitioners should advise clients to always file Form 4 for the Rule 131(2) extension if there is any possibility that the base deadline cannot be met, as this preserves the longer Rule 138 window.

 

V.  What Information Must Be Furnished?

Form 27 requires disclosure of the following information for the three-year reporting period:

A.  Where the Invention Has Been Commercially Worked in India

 

Now only confirmation has to be provided if the Patent is worked in India. No details as to quantum, value, manufacturing, import etc are to be provided.

B.  Where the Invention Has NOT Been Commercially Worked in India

 

The following information has to be provided if the Patented invention is not worked in India.

 [   ] Patented invention is under development/ commercial trial

 [  ] Patented invention is under Review/ approval with regulatory authorities

 [   ] Exploring commercial licensing

 [   ] Any other, may specify 

 C.  Licensing Information

•       Details of any licences granted (voluntary, compulsory, exclusive, or non-exclusive) — including the name of each licensee, their address and nationality

•       Patentee and each licensee have to file a separate Form 27

D. Commercial License:  If willing to commercially license the invention in India, please provide email address and contact number where you can be approached by potential licensee.

VI.  Consequences of Non-Compliance

Non-filing or delayed filing of Form 27 carries the following consequences:

•       Imposition of a monetary penalty under Section 122 of the Patents Act, 1970 as amended by the Jan Vishwas Act, 2023 of up to INR 1,00,000 (approximately USD 1,200), with a continuing failure attracting a further penalty of INR 1,000 (approximately USD 12) for each day of continued default

•       Where the statement furnished is false — whether knowingly or without believing it to be true — an enhanced penalty of 0.5% of total turnover or INR 5,00,00,000 (approximately USD 60,000), whichever is lesser, becomes payable

•       Delay cannot be condoned by filing a petition under Rule 137(2), which expressly bars condonation of delay in Form 27 filings

•       Where the filing deadline expired before the commencement of the 2024 Amendment Rules, it is not possible to file Form 27 at all for those periods — the obligation is extinguished with no remedy

•       Non-working or inadequate working disclosures can provide the factual basis for a compulsory licence application under Section 84 by third parties

 

Practitioner's Note:  The prohibition on delay condonation under Rule 137(2) makes Form 27 unique among patent filings. Unlike missed renewal fees or response deadlines, there is no safety net. Practitioners must proactively diarise Form 27 deadlines for every client's patent portfolio and initiate the information-gathering process well before the base deadline — ideally at least three months in advance.

 

VII.  Extension of the Filing Deadline

The deadline for filing Form 27 may be extended in two stages:

•       First stage — Rule 131(2) read with Form 4: An extension of up to three months may be obtained by filing Form 4 along with the prescribed fee, before the expiry of the base deadline. For most patents granted before FY 2023-24, this moves the outer date from 30 September 2026 to 31 December 2026.

•       Second stage — Rule 138: A further extension of up to six months may be obtained by way of a request under Rule 138 along with the prescribed fee and reasons for delay. This extends the outer date to 30 June 2027 for the current reporting block.

•       Important caveat: If the three-month extension under Rule 131(2) is not first availed of, the outer limit available under Rule 138 is restricted to 31 March of the relevant year — not 30 June. Beyond these stages, no further extension is available, and delay cannot be condoned under Rule 137.

 

VIII.  Professional Fees and Filing Costs

While Form 27 itself does not attract a separate Government filing fee where the statement is filed within the base deadline, patentees and licensees should plan for the professional fee payable to their patent agent / attorney for preparation, review and filing of the statement. 

Government Fee / Additional Service Fee  NIL — provided the statement is filed within the base deadline. Extension fees under Rule 131(2) (Form 4) and / or Rule 138 will additionally apply if the filing is delayed beyond the base deadline.

A few practical notes on cost: the per-statement basis applies even where a single Form 27 is filed jointly for multiple related patents (in line with Section 146(2) read with Rule 131(1)) — the fee is not multiplied by the number of patents clubbed. Where the deadline is missed and an extension under Rule 131(2) or Rule 138 becomes necessary, the prescribed Government extension fees will apply over and above the professional fee, and these increase progressively with the length of delay. Out-of-pocket expenses such as notarisation, courier and translation, where required, are charged at actuals.

 

Set against the penalty exposure outlined in Section VI — up to INR 1,00,000, with INR 1,000 per day of continuing default and an enhanced penalty of up to INR 5,00,00,000 / 0.5% of turnover for false statements — timely filing through a registered patent agent remains, by a wide margin, the most cost-effective course of action.

 

IX.  Practical Compliance Checklist for Patentees and Licensees

To ensure timely and complete compliance, patentees and licensees should take the following steps no later than three months before the applicable deadline:

•       Identify all granted Indian patents and determine the applicable three-year reporting block for each

•       Confirm the role in which the statement is being filed — patentee or licensee — and obtain appropriate authorisation

•       Audit the commercial working history for the reporting period and licensing agreements

•       Where the invention has not been worked, document the reasons clearly and in sufficient detail

•       Gather details of all licences granted or sub-licences executed during the reporting period

•       Where multiple related patents are held by the same patentee, confirm whether a consolidated filing is appropriate

•       Verify whether any co-patentees or licensees are filing separate statements for the same patent

•       Engage a registered patent agent or attorney at least 60 days before the deadline to prepare and review the draft Form 27 before submission

 

X.  Conclusion

Form 27 is one of the most frequently overlooked yet consequential obligations in Indian patent practice. The shift to a triennial filing cycle under the 2024 Amendment Rules has simplified the calendar but has also concentrated the compliance burden into a single, non-extendable event with limited relief if missed. For most patentees and licensees holding patents granted before the financial year 2023-24, the immediate deadline is 30 September 2026 — with a possible extension to 31 December 2026 under Rule 131(2) and a final outer limit of 30 June 2027 under Rule 138.

Practitioners are strongly advised to commence the information-gathering process from clients immediately. The absence of any condonation mechanism under Rule 137(2) means that a missed Form 27 deadline is an irrecoverable compliance failure. Proactive engagement, early diarising, and structured client communication are the only effective safeguards.

Delhi HC Clarifies NBA Approval Timing in Patent–Biodiversity Interface

ABSTRACT  —  In a significant decision touching the intersection of patent law and biodiversity legislation, the Delhi High Court set aside the Controller of Patents’ order refusing an herbal pain-killer patent application on the ground that the applicant had not yet produced National Biodiversity Authority (NBA) approval at the time of hearing. The Court held that the proper course was to defer the final order until the approval was received, not to refuse outright—particularly where the invention had been found novel on merits. The judgment clarifies the timing requirements under the Biological Diversity Act, 2002 vis-à-vis the Patents Act, 1970, and reinforces the Controller’s duty to exercise discretion humanely and purposively.

I.  Introduction

The grant of a patent for an invention based on, or derived from, biological material sourced from India is conditional upon compliance with the Biological Diversity Act, 2002 (‘BD Act’). The Patents Act, 1970 (‘PA’) gives effect to this through Section 10(4)(ii)(D), which mandates disclosure of the source of biological material, and through the regulatory requirement that the National Biodiversity Authority (‘NBA’) approval be obtained before any intellectual property right is granted. The interplay between these two statutes has generated considerable uncertainty in prosecution practice—when exactly must NBA approval be placed on record, and what is the consequence of failure to do so by any particular date?

The Delhi High Court’s decision in this appeal under Section 117A(2) of the PA directly addresses these questions. It provides welcome clarity that the controller’s power is not a binary ‘refuse or grant’ binary but includes a third, more proportionate option: defer the final order while the applicant obtains the requisite regulatory clearance.

II.  Background Facts

2.1  The Invention

The patent application in question related to an oral herbal pain-killer composition targeting peripheral pain. The invention disclosed:

•        Synergistic herbal compositions in specific, predefined ratios of selected herbal components (with particular chemical constituents from identified plant parts); and

•        A simplified, reproducible process of preparation maintaining safety, efficacy, and stability.

2.2  Prosecution History

Following filing, the Patent Office issued a First Examination Report (‘FER’) raising multiple objections, notably:

•        Lack of inventive step / obviousness;

•        Non-patentability under Sections 3(d), 3(e) and 3(p) of the PA;

•        Absence of NBA approval as required under Section 10(4)(ii)(D) of the PA.

 

The applicant filed a substantive response, amended the claims to address the prior art objections, and explained the distinguishing features of the invention. The Controller thereafter issued a hearing notice, but retained only two objections: (a) NBA approval; and (b) Section 3(p) non-patentability. This narrowing was significant—it signalled that the Controller had been persuaded on inventive step, novelty, and the other Section 3 exclusions.

2.3  The Hearing and Impugned Order

At the hearing, the applicant appeared through an ‘authorised representative’ (as opposed to a registered patent agent or advocate). Written submissions were also filed. Critically, the applicant informed the Controller that an e-mail had been sent on 28.12.2023 to the Controller enclosing the NBA acknowledgement, demonstrating that the application for approval was pending. Notwithstanding this, the Controller passed an order dated 22.02.2024 refusing the application under Section 15 of the PA on three grounds:

•        NBA approval not obtained within 15 days as allegedly prescribed;

•        Non-patentability under Section 3(p), since the biological materials were already recognised as herbal medicines and the composition amounted to a mere ‘new use’ without technical advancement;

•        Unauthorised representation: the representative at the hearing was not a registered patent agent or advocate as required under Sections 128 and 132 of the PA.

 

The NBA approval was eventually received on 04.07.2024—months after the refusal order.

III.  The Appeal: Arguments and Counter-Arguments

3.1  Appellant’s Case

The appellant challenged the refusal on the following grounds:

•        Section 6(1A) of the BD Act requires the applicant to register with the NBA before IP rights are ‘granted’—not at the time of filing or hearing. Consequently, there was no obligation to produce NBA approval at the hearing stage.

•        The Guidelines issued under the BD Act confirm the same position: approval must be in place before the patent is ‘granted’, not as a condition precedent to the hearing or the Controller’s deliberation.

•        Since the outcome of the NBA process is not within the applicant’s control, the Controller ought to have deferred the order pending receipt of the approval—particularly after the applicant had notified the Controller of the pending application.

•        Section 15 of the PA empowers the Controller to allow amendments rather than refuse outright, and such discretion should have been exercised.

•        The refusal on grounds of representation was unjust where the applicant was present through an authorised representative who had filed written submissions.

3.2  Respondent’s Case

The respondent (Controller) maintained that:

•        NBA approval ought to have been produced with the application, at the hearing, or at the very least before the impugned order was passed.

•        Approval received on 04.07.2024 post-dated the order and could not rescue the application.

•        The Section 3(p) objection was independently sustainable on merits.

•        The hearing representation violated Sections 128 and 132 of the PA and was a procedural defect that infected the hearing.

IV.  The Court’s Analysis and Holding

4.1  On NBA Approval Timing

The Court decisively rejected the Controller’s interpretation. Anchoring its analysis in Section 6(1A) of the BD Act, the Court held that the obligation is to register with the NBA before IP rights are granted—not before the hearing or before the order. The Court found this reading was fortified by two specific paragraphs of the official Guidelines:

•        Paragraph 19: The patent shall not be ‘granted’ unless NBA permission has been submitted.

•        Paragraph 22: No patent shall be ‘granted’ without necessary permission where the invention uses biological material from India.

 

Both provisions operate as conditions precedent to ‘grant’, not conditions precedent to the hearing or even to the Controller’s deliberation. The Court observed—pointedly—that no provision of law had been cited by the respondent prescribing that the application must be rejected if approval is not placed on record by any earlier point in time.

The Court further noted an inherently structural reason why flexibility is required: the timing of NBA approval is not within the applicant’s control. An applicant cannot ‘insist’ on the authority granting approval within any particular timeframe. It would be fundamentally unjust to penalise an applicant for the administrative pace of a statutory authority over which the applicant has no dominion.

Given that: (i) the applicant had informed the Controller that NBA approval was awaited; (ii) the Controller was satisfied that the invention was novel; and (iii) the only outstanding matter was regulatory clearance from a third body, the proper course was plainly to defer the order. The Court held the Controller’s failure to do so was an error warranting interference.

4.2  On the Scope of Section 15 of the PA

Section 15 of the PA grants the Controller wide powers to require amendment of the application, specification, or other documents. The Court emphasised that refusal is a remedy of last resort under Section 15: the statute provides that the application ‘shall be refused’ only where the applicant ‘fails to take steps’ for the amendment required. In the present case, the applicant had not failed to take steps—it had proactively communicated the pendency of the NBA approval. The discretion to defer, inherent in Section 15, ought to have been exercised.

4.3  Questions Left Open

The Court deliberately refrained from entering into the merits of two subsidiary issues, leaving them for the Controller on remand:

•        Section 3(p) non-patentability: Whether the herbal composition amounts to a patentable invention or merely a ‘new use’ of known materials without technical advancement is left entirely open. The Court made no observations on the merits of this ground.

•        Representation by authorised agent: While the applicant undertook that she would be represented by a registered patent agent and/or advocate at the remanded hearing, the Court did not decide whether the earlier hearing was vitiated by the unauthorised representation.

4.4  Operative Directions

The Court disposed of the appeal with the following directions:

•        The respondent shall re-examine the patent application after granting a fresh opportunity of hearing to the applicant.

•        The NBA approval shall be taken into account, along with all oral and written arguments previously advanced.

•        No fresh material shall be placed by the applicant before the respondent except the NBA approval.

•        The Section 3(p) non-patentability question is expressly left open to be decided by the Controller in accordance with law.

•        The respondent shall take a decision within two months of receiving the order.

V.  Critical Analysis

5.1  Purposive Construction of Biodiversity-Patent Interface

The decision exemplifies purposive statutory construction. The BD Act and the PA pursue complementary objectives—protection of biological diversity and equitable benefit-sharing on one hand, incentivisation of innovation on the other. A literalist reading that treats NBA approval as a condition precedent to any stage before ‘grant’ would subordinate innovation incentives to administrative timelines in a way the legislature did not intend. The Court’s reading harmonises both statutes.

More practically, it protects applicants from a ‘Catch-22’: they cannot control how quickly the NBA processes an application, yet on the Controller’s approach they would lose the entire 20-year patent term for an administrative delay over which they bear no responsibility.

5.2  The Deferred-Order Doctrine

This judgment effectively establishes what may be termed a ‘deferred-order doctrine’ in patent prosecution: where a pending regulatory approval from a third authority is the sole remaining obstacle to grant, and the applicant has communicated the pendency to the Controller, the Controller must defer—not refuse. This doctrine sits comfortably alongside the principle of natural justice and the Controller’s general duty to act fairly.

Patent practitioners should now routinely inform the Controller of pending NBA applications and request deferment in writing. This creates a record and aligns with the judgment’s rationale.

5.3  Implications for Section 3(p)

The Court’s silence on Section 3(p) is itself instructive. By leaving the question open, the Court acknowledges the complexity of applying the exclusion to synergistic herbal compositions. Section 3(p) bars patents for ‘traditional knowledge’ and ‘aggregation or duplication of known properties of traditionally known component or components’. The applicant’s argument that specific part-based selection, defined chemical-constituent ratios, and demonstrated synergistic pharmacodynamic efficacy constitute technical advancement beyond mere aggregation is a strong one, but will need to be argued on the merits before the Controller.

This aspect of the remand will be watched closely by the ayurvedic and herbal pharmaceuticals industry, for whom the boundary between traditional knowledge and patentable innovation is of existential commercial importance.

5.4  Representation: A Cautionary Note

While the Court did not decide the representation point adversely against the applicant, the undertaking to appear through a registered patent agent and/or advocate at the remanded hearing is itself a practical concession that the earlier hearing may have been irregular. Sections 128 and 132 of the PA are unambiguous: only registered patent agents and advocates are entitled to represent clients before the Controller. Applicants and in-house IP teams must ensure strict compliance. An unauthorised representative attending a hearing—even if armed with well-prepared written submissions—risks providing a ground for the Controller to discount or disregard those submissions.

VI.  Practical Guidance for Patent Practitioners

Drawing on the judgment, the following best-practice protocol is recommended for herbal and biological patent applications involving Indian biological material:

1.     File the NBA application concurrently with, or as early as possible after, the patent application. Document the filing date and acknowledgement carefully.

2.     Upon receipt of the FER, immediately check whether the NBA approval has been received. If not, inform the Controller of the status in the FER response and request that the final order be deferred pending receipt of approval.

3.     Before any scheduled hearing, submit a written request to defer the hearing or the final order if approval is still outstanding. Attach the NBA acknowledgement.

4.     Ensure that all hearings before the Controller are attended only by a registered patent agent and/or an enrolled advocate. Authorised representatives of the applicant may accompany but should not lead the hearing.

5.     If a refusal order is nonetheless passed before NBA approval is received, file an appeal under Section 117A(2) promptly and annex the NBA approval (if meanwhile received) to the appeal. This judgment provides the legal hook to seek a remand.

6.     On Section 3(p) strategy: prepare detailed technical evidence establishing (a) specific part-based selection; (b) defined chemical-constituent ratios; and (c) demonstrated synergistic pharmacodynamic efficacy, distinguishing the invention from mere aggregation or new use of known properties.

VII.  Conclusion

This judgment is a meaningful contribution to Indian patent jurisprudence at the interface of innovation law and biodiversity regulation. Its core holding—that NBA approval is a condition precedent to ‘grant’, not to the hearing or the order, and that the Controller must defer rather than refuse where approval is pending—is grounded in text, purpose, and basic administrative fairness.

The decision also underscores a broader principle: the patent system must be administered with proportionality. Procedural or regulatory pendencies that lie outside the applicant’s control should not be weaponised to deny substantive rights that the inventor has otherwise earned. The Controller’s power under Section 15 is not merely a power to refuse; it is equally a power to accommodate, to defer, and to exercise discretion in a manner that advances rather than frustrates the twin goals of the patent system: rewarding innovation and enriching the public domain.

The Section 3(p) question—arguably the more substantive patent-law issue in the case—remains live. The remanded proceedings will provide an important opportunity to develop the law on the patentability of synergistic herbal compositions, and the outcome will bear watching by the pharmaceutical, traditional medicine, and biotechnology industries alike.