The Indian Patents Rules, 2003, were amended on March 15, 2024, simplifying the procedure for filing Working Statements in respect of granted patents in India. Under the amended Rules:
Working statements are now required to be filed once every three financial years instead of “annually”.
Requirement for filing the working statement commences from the financial year following the financial year in which the patent was granted.
Working statements are required to be within six months from the expiry of the third financial year i.e., by September 30 of the fourth financial year.
In case of missing the due date for filing of the working statement, the patentee can apply for an extension of up to three months by filing a formal request (on Form 4) and by paying an extension fee of approx. USD 125 by a large entity.
Statements to be filed in a new format (Form 27).
Under the new format, there is no requirement to provide any sales or revenue, or any other data related to the working of patents in India.
Patentees and licensees can only disclose whether the reported patent was worked in India or not during the reported three financial years.
If worked, then no additional data is required to be submitted.
If not worked, the patentee can provide the reason of not working the patent and for that the new Form 27 enlists three most frequently used reasons by the patentee. The patentee can opt for any one such reason and if the enlisted reasons do not cover the actual reason of not working of patent, then the patentee can provide the actual reason.
For patents which are available for licensing, the patentees can now provide contact details of their authorized person who could be contacted by the interested parties for licensing negotiations with the patentee.
The failure to file working statement does not affect the validity or the legal term of the patent, but such noncompliance might result in a penalty of about US$ 20,000. There is no precedent so far of the Indian Patent Office imposing such penalty against the defaulters.
The aforesaid changes introduced by the Patents (Amendment) Rules, 2024 are aimed at standardizing the Indian patent procurement and maintenance process and to remove the pain points which the applicants/patentee have been expressing during stakeholders’ meeting periodically organized by the Department of Industry & Internal Trade, the agency responsible for administrating IP laws in India.