INDIA UPDATE: IPO releases FAQs to clarify the provisions of the Working Statement Requirement under the Patents (Amendment) Rules, 2024
In furtherance of the stakeholders’ meeting hosted by the Indian Patent Office (IPO) last month regarding The Patents (Amendment) Rules, 2024 (amended rules), the IPO on August 26, 2024, released FAQs to guide the Patentees and Licensees specifically regarding the recent requirement for filing the “Statement of Working” (Form 27/WS). More details in respect of this can be accessed here.
The key points are summarised below:
1. Deadline for filing the working statement along with available extensions-
“As per the earlier rules, Form-27 for these patents in respect of the period FY 2023-24 would have been due from 1st April, 2024 (assuming that Form-27 for FY 2022-23 has been filed in time)”.
As per the amended rules, now the Form-27 must be filed once in respect of every three financial years starting from the financial year commencing immediately after the financial year in which the patent was granted. The FAQs clarify that with the Patents (Amendment) Rules, 2024 taking effect from March 15, 2024, the three-year time period will be applicable prospectively. Accordingly, all Patentees and Licensees are required to file Form 27 for the period between Financial year (FY) 2023 to 2026 by September 30, 2026 (further extendable as explained below).
The table below summarises the details-
a. The deadline for filing Form-27 can be extended up to three months by filing Form 4 under Rule 131(2). An additional extension of up to six months may be granted under Rule 138 of the Indian Patent Rules, allowing for a total possible extension of up to nine months for filing the working statement.
b. Where the Patentee/licensee has failed to avail an extension of three months under Rule 131(2) before the expiry of the extended deadline, the deadline for filing Form 27 can be extended up to six months directly under Rule 138.
c. The official fee for filing the extensions under the given provision is as follows:
a. 3 months extension under Rule 131(2): A total official fee of USD 360 (Official fee of approximately USD 120/month (INR 10,000) for each month’s extension)
b. 6 months extension under Rule 138: A total official fee of USD 3750 (Official fee of approximately USD 625/month (INR 50,000) for each month’s extension)
c. 9 months extension under Rule 131(2) along with Rule 138: A total official fee of USD 4110 (USD 360 for 3 months extension under rule 131(2) and USD 3750 for 6 months extension under Rule 138)
d. If a patentee/licensee has not submitted Form-27 for the FY 2021-22 or FY 2022-23 within the deadlines set by the previous rules, they cannot use the new rules to file Form-27 for these lapsed years by combining them with the FY 2023-24 period as a single block of three years.
If you have missed filing a Form-27 for the FY 2021-22 or FY 2022-23 in any case, kindly reach out to us directly and we will analyze the case and advise you accordingly.
2. Deadline for filing the working statement for patents expiring in FY 2023-2024 and FY 2024-2025:
3. Penalties for non-filing of Form 27:
Non-filing of Form-27 may lead to the imposition of a penalty under Section 122 of the Patents Act, 1970 [as amended through the Jan Vishwas (Amendment of Provisions) Act, 2023]. More details in respect of this can be accessed here.
Should you have any questions or need further clarification on these updates, please do not hesitate to contact Ms. Shivarpita Nailwal at shivarpita@iprattorneys.com.
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