What is to be done once a patent has been granted?
After the grant of the patent, the patentee is required to pay the renewal fee accumulated from third year onwards till the date of grant of the patent. This accumulated renewal fee must be paid within three months of date of grant of the patent. Extension of six months is also available for payment of accumulated renewal fee.
Other than renewal fees, the patentee is required to furnish a “Statement of Working” every year till the expiry of the patent. This requirement may be met by the patentee or the licensee of the patentee. This statement is required to be submitted in respect of every calendar year, by 31st of March of the subsequent year. Failure to submit this information may result in penalty including a heavy fine which may extend up to USD 20,000.
Is there a requirement of paying a separate sealing fee or issue fee in India?
There is no requirement of paying any separate sealing fee/issue fee, other than renewal fees which becomes due upon grant of the patent.
When is renewal fee/annuities 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 2 or more years in advance.
What information is required to be stated in the “Statement of Working”?
The patentee is required to furnish the following information in the “Statement of Working”:
- Whether or not the invention has been worked on a commercial scale in India.
- If worked, the quantum and value of the patented product in India.
- If not worked, reasons for not working the patented product in India.
- The licenses and sub-licenses granted during the year.
Can a patent be restored if it has expired due to non- payment of renewal fee?
In case a patent expires due to non-payment of renewal fee, the patentee may file a request for restoration of the patent. The request for restoration must be filed within 18 months of expiry of the patent. Also, 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.