Post Grant Requirements for Patent Applicant in India

1. What are the key requirements that a patent applicant is required to comply with after the grant of a patent in India? 

Ans. There are three key  requirements that a patent applicant must comply with after the grant of a patent in India, which are as follows:

• Pay renewal fees to maintain the patent
• File the statement of working of patent in India
• Update patent register records in case of any change in the ownership. 

2. What are the immediate steps required to be taken once a patent has been granted in India?

Ans. After the grant of the patent, the patentee is required to pay renewal fee accumulated till the date of grant of the patent to maintain the patent. The schedule for the payment of the renewal fee is as follows:

• Within three (3) months of grant: All annuity payments that are due, calculated from the third year from the filing date. An extension of six (6) months is available.

• Before each subsequent anniversary of the filing date:

Note: For a PCT National Phase application, the international filing date is the filing          date in India. For a complete application filed after provisional, the filing date is the       filing date of the provisional application.

3. When is renewal fee/annuities for patent payable in India? 

Ans. The renewal fee becomes due on the anniversary of the patent’s filing date. The patentee may pay the renewal fee every year or may pay renewal fee for two or more years in advance.

4. Is there a requirement of paying a separate sealing fee/issue fee in India?

Ans. There is no requirement of paying any separate sealing fee or issue fee, other than the renewal fee.

5. What are the consequences of non-payment of renewal fee in India? 

Ans. Non-payment of the renewal fee results in cessation of the patent.

6. Can a patent ceased on account of non-payment of renewal fee be restored?

Ans. In case a patent ceased due to the non-payment of the renewal fee, the patentee may file a request for the restoration of the patent. The request for restoration must be filed within eighteen (18) months of the expiry of the patent. The patentee will be required to demonstrate that the failure in payment of renewal fee was unintentional and the request for restoration has been filed without any undue delay. The Controller, if satisfied, may allow the request for restoration. Also, the Controller may impose certain conditions on the restored patent in order to safeguard the interest of those who would have started working the invention owing to the lapse of the patent.

7. What is a financial year for the purposes of Statement of Working?

Ans. A financial year is a period from 01 April of a given year to 31 March of the following year.

8. What is a Statement of Working of patent in India? 

Ans. It is a statement as to  whether the patented invention has been worked on a commercial scale in India.

9. When is the first Statement of Working required to be filed?

Ans. The Statement of Working is required to be filed once in respect of every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted. The first Statement of Working is required to be filed within six (6) months from the expiry of the 3^rd financial year commencing immediately after the financial year in which the patent was granted.

For example, for a patent that is granted between 01 April 2024 to 31 March  2025, the first working statement is required to be filed for the financial years: 01 April 2025- 31 March 2026,  01 April 2026- 31 March 2027 and 01 April 2027- 31 March 2028, by 30 September  2028.

10. Who is required to file the Statement of Working? 

Ans. It must be filed by the patentee and each licensee of the patentee.

11. Can the patentee file the working statement on behalf of the licensee? 

Ans. No, the patentee cannot file the working statement on behalf of the licensee. The licensee is required to file a separate statement of working in his own name. 

12. Is Statement of Working required to maintain a patent in India? 

Ans. No. Not filing of a Statement of Working does not affect the legal status of a patent in India, as long as the necessary annuities, required for maintaining the patent, are paid within the prescribed period. 

13. What information is required to be furnished in the “Statement of Working”? 

Ans. The patentee is required to furnish the following information in the “Statement of Working”:

a) Whether or not the invention has been worked in India.

b) If not worked, reasons for not working the patented product in India reasons for not working,

i. Patented Invention is under development/ commercial trial;
ii. Patented Invention is under Review/approval with Regulatory authorities;
iii. Exploring commercial licensing

c) Whether the patent is available for licensing.

d) In case the patent is available for licensing, the patentee has also an option to indicate whether the patentee would you be interested in receiving communications from any person interested in seeking a license, and provide their contact details.

14. What information is required to be provided in the Statement of Working if a patent is not being worked in India? 

Ans. If a patent is not being worked in India, reasons for not working should be provided. 

15. Is importation of a patented article considered as working of patent in India? 

Ans. Yes, importation is considered as working of patent in India. 

16. Can one Statement of working be filed for multiple patents? 

Ans. Yes, a single statement can be filed for related patents and which are granted to the same patentee.  

17. What are the consequences of not submitting the Statement of Working?

Ans.  A failure to submit this information may result in a penalty which may extend to one lakh rupees, and in case of the continuing refusal or failure, a further penalty of one thousand rupees for every day after the first during which such refusal or failure continues.

18. What are the consequences of submitting incorrect information in the Statement of Working?

Ans.  Furnishing incorrect information in the Statement of Working may result in a penalty for a sum equal to one half per cent of the total sale or turnover, as the case may be, of business or of the gross receipts in profession as computed in the audited accounts of such person, or a sum equal to five crore rupees, whichever is less.