The Indian Patent Office has issued Frequently Asked Questions [FAQs] on 26th August 2024, clarifying working statement deadlines under Amendment of Patent Rules of India which came to force on 15th March 2024. For your immediate reference and records, we are enclosing copy of the FAQs.
Please note that the deadline to file working statement would now be calculated from the year of grant of Patent and will be filed for a period of 3 consecutive financial years commencing immediately after the financial year in which patent is granted. For your immediate reference, we are mentioning herein below, the deadline(s) to file working statement under different scenarios:
| Year of Grant of Patent | Deadline to file Next Working Statement & Period for which same is due |
| If Patent was granted in Financial Year* 2022-2023 or before | Period for which working Statement will be due: 01st April 2023 to 31st March 2026 Deadline: 30th September 2026 |
| If Patent was granted in Financial Year* 2023-2024 | Period for which working statement will be due: 01st April 2024 to 31st March 2027 Deadline: 30th September 2027 |
| If Patent is granted in Financial Year* 2024-2025 or after | For Patents granted in Financial Year* 2024-2025, working statement will be due: 01st April 2025 to 31st March 2028 Deadline: 30th September 2028 For Patents granted in subsequent years three financial year window will be calculated starting from Financial Year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period. |
*Financial Year starts from 01st April and ends on 31st March of said year
Deadline to file working statement for cases expiring before completion of 3 Financial year bracket:
If a Patent expires before three Financial Year bracket is completed, then working statement is required to be filed for its remaining period in financial year subsequent to the one in which the patent expires. For ease, please refer to below tabular representation:
| Year of Expiry | Deadline to file Next Working Statement & Period for which same is due |
| If Patent Expires in Financial Year 2023-2024 | Period for which working statement will be due: 01 April 2023 to 31 March 2024 Deadline: 30 September 2024 |
| If Patent Expires in Financial Year 2024-2025 | Period for which working statement will be due: 01 April 2023 to 31 March 2025 Deadline: 30 September 2025 |
Possible extension to file working statement:
The above-mentioned deadlines to file working statement are now extendable as follows:
- By 3 months under Rule 131(2),
- Either followed by or directly by another 6 months under Rule 138.
Hence, a total of 9 months extension is possible to file a working statement. No additional condonation of delay or extension is possible beyond said 9 months extension.
Penalties on refusal or failure to supply information under working statement:
The penalties involved for failure to file working statements have been amended by another act in India which while removing imprisonment and reducing base penalty amount [from previous INR One Million to INR One Hundred Thousand] has added an additional penalty of INR One Thousand for every day after the first instance of failure or refusal during which such failure continues.
For cases where deadline to file working statement expired prior to commencement of Patent (Amendment) Rules, 2024 and working statement was not filed for said period:
As per the FAQ, it is not possible to file Form 27 where the due date for filing was over before the commencement of the Patents (Amendment) Rules, 2024.
However, in view of daily penalty being counted from the date of first instance of failure or refusal to submit details under working statement, and due to lack of any specific precedence here, you may consider filing working statement for missed years under miscellaneous document with IPO (as the same cannot be uploaded under Form 27 due to expiry of deadline). Though it would be an informal filing, this may help in the reduction of daily penalty (subject to the Controller’s discretion) as the Controller may consider this as a disclosure and may result in being an economical option compared to waiting for a demand from Controller and paying possible penalty later.
Our views:
We believe this is a step in positive direction and has rightly clarified position and spirit of Amendment of Patent Rules which came into force on 15 March 2024 to simplify requirement of filing of working statement for existing and future patents alike.
Contributor(s)
Contributor to present post is Ankush.
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