The Indian Patent Office has issued a FAQ document clarifying the time limits and periods covered for declarations of use relating to patents granted in the country. We summarise the key points discussed.
New rules concerning the procedure for declarations of use or 'working statements' for patents granted in India ("Indian patents") came into force on 15 March 2024. Due to a lack of clarity on some of these rules, leading to contradictory exchanges with IP firms in India, the Office of the Controller General of Patents, Designs and Trade Marks (Indian Patent Office) published an FAQ document on 26 August to clarify the procedure.
Why is this important for Indian patents?
As you may already know, failure to provide or refusal to provide the Indian Patent Office with information on the exploitation of a patented invention may result in criminal prosecution, with potential fines of up to US$15,000 (approximately €13,530).
Declaration of use of patents granted in India or 'working statements' must be filed with the Indian Patent Office every three years, starting from the financial year immediately following the grant of the Indian patent and within six months after the end of each three-year period. The financial years run from April 1 to March 31 of the following year.
Since the new procedure came into force on 15 March 2024, the three-year period is applicable from that date, with different scenarios impacting the period during which the declaration must be filed at the Indian Patent Office. These scenarios are presented in the FAQ document, and can be summarised as follows:
Extensions of time are available to file the declaration with the Indian Patent Office of up to nine months beyond the deadlines indicated above, subject to the payment of fees (costs are dependent on the extension requested).
What do you need to do now?
It is important to note this reporting obligation and the exact deadlines if you hold Indian patents, especially as the first due date comes before the end of this month.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
