1. What are the key things that a patent applicant is required to comply with after the grant of a patent in India?
There are three key things 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 annual statement of working of patent in India
– Update 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?
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 3 months of grant: All annuity payments that are due, calculated from the third year from the filing date.
– Before each subsequent anniversary of the filing date: Annuity payment.
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.
This accumulated renewal fee is payable within three months of grant of patent. An extension of six months is available.
3. When is renewal fee/annuities for patent payable in India?
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?
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?
Non-payment of the renewal fee results in expiration of the patent.
6. Can a patent expired on account of non-payment of renewal fee be restored?
In case a patent expires 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 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?
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?
It is a statement as to the extent to which the patented invention has been worked on a commercial scale in India.
9. When is the first Statement of Working required to be filed?
The First Statement of Working is required to be filed from the 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 2021 to 31 March 2022, the first working statement is required to be filed for the financial year 01 April 2022 – 31 March 2023 by 30 September 2023.
10. Who is required to file the Statement of Working?
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?
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?
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”?
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 worked, approximate revenue/value accrued in India to patentee(s)/licensee furnishing the statement from the patent(s) .
c) If not worked, reasons for not working the patented product in India reasons for not working and steps being taken for working of the invention.
14. What information is required to be provided in the Statement of Working if a patent is not being worked in India?
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?
Yes, importation is considered as working of patent in India.
16. Can one Statement of working be filed for multiple patents?
Yes, a single statement can be filed for related patents where the approximate revenue or the value accrued cannot be derived separately for each related patent.
17. What are the consequences of not submitting the Statement of Working?
A failure to submit this information may result in a penalty including a fine which may extend up to INR 10,00,000 (approximately USD 14,000).
18. What are the consequences of submitting incorrect information in the Statement of Working?
If the patentee or the licensee furnishes information or statement which is false, they may be punished with imprisonment which may extend to six months, or with fine, or with both.
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