In a significant move affecting patent holders in India, the Indian Patent Office (IPO) has issued new guidelines clarifying the due dates for filing Statements of Working (SOW) for granted patents. These changes, stemming from the Patents (Amendment) Rules, 2024, have altered the landscape for patent maintenance in India. Let’s dive into the key updates and what they mean for patent holders.
The Patents (Amendment) Rules, 2024, which came into effect on March 15, 2024, changed the periodicity for filing SOWs from an annual requirement to once every three financial years. This change prompted discussions and diverse interpretations among stakeholders, particularly regarding the correct due dates for patents granted on or before March 31, 2023.
Key Clarifications
To address these concerns, the IPO held an “Open Session” on July 29, 2024, followed by the issuance of FAQs on August 26, 2024. These FAQs provide crucial clarifications on the new SOW filing requirements.
Due Dates Based on Grant Date
The IPO has outlined specific due dates for filing SOWs based on when the patent was granted:
- Patents granted before March 31, 2023: Due by September 30, 2026
- Patents granted from April 1, 2023 to March 31, 2024: Due by September 30, 2027
- Patents granted from April 1, 2024 to March 31, 2025: Due by September 30, 2028
Extension Periods and Fees
For each due date, the IPO allows for two extension periods:
- Extension 1: 3 months at USD 125 per month
- Extension 2: Additional 6 months at USD 625 per month
If Extension 1 is not used, a single 6-month extension at USD 625 per month is available.
The SOW will cover three financial years preceding the due date. For example, for patents granted before March 31, 2023, the patent owner will report on the working of the patent from April 1, 2023, to March 31, 2026.
Provisions for Expired/Expiring Patents
The IPO has also provided guidance for patents that have expired or will expire soon:
- Patents expired between April 1, 2023, and March 31, 2024: SOW due by September 30, 2024
- Patents expiring between April 1, 2024, and March 31, 2025: SOW due by September 30, 2025
Implications for Patent Holders
- Extended Periods: The shift to a three-year cycle reduces the frequency of filings, potentially easing the administrative burden on patent holders.
- Alignment of Due Dates: For many patents, the due dates now align, which could streamline the process for companies with multiple patents.
- Increased Planning Required: With longer periods between filings, patent holders will need to maintain more comprehensive records of patent working over extended periods.
These changes represent a significant shift in India’s patent maintenance requirements. Patent holders should carefully review their portfolios and align their internal processes with these new timelines. While the reduced frequency of filings may offer some relief, the increased complexity and higher stakes for late submissions underscore the need for diligent patent management.
For more detailed information, patent holders are encouraged to review the official FAQ document released by the IPO, available at the IPO FAQ Document.
Stay tuned for further updates and interpretations as the patent community adapts to these new requirements.
