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India – Note On IPO’s FAQs On Statement Of Working.

The Indian Patent Office (IPO), on August 26, 2024, issued FAQs clarifying the due dates for filing of SOW in India for granted patents. The periodicity for filing of SOW was changed from “annual” to “every three financial years” by the Patents (Amendment) Rules, 2024, which came into effect from March 15, 2024. After the notification of the amended Rules, diverse interpretations were discussed by the stakeholders in an “Open Session” held by the IPO on July 29, 2024, regarding the correct due date for filing of SOW for the patents granted on or before March 31, 2023.

The Patent Office, through FAQs, has clarified the due dates for filing of the working statement under the amended Rules as indicated below:

I. Due dates for filing SOW under the amended Rules:

SL. No.Time of Grant of PatentDue Date to File SOWThe financial years for which the SOW is to be filed
1.Patents granted before March 31, 2022September 30, 2026The due date can be extended up to:Extension 1 (3 months): December 31, 2026: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2027 (USD 625 per month)If Extension 1 is not availed, then March 31, 2027 (6 months from due date) (USD 625 per month).For the working of the patent during the period:April 1, 2023 to March 31, 2026(3 Financial Years 2023-24; 2024-25; and 2025-26)
2.Patents granted during April 1, 2022 to March 31, 2023September 30, 2026The due date can be extended up to:Extension 1 (3 months): December 31, 2026: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2027 (USD 625 per month)If Extension 1 is not availed, then March 31, 2027 (6 months from due date) (USD 625 per month).For the working of the patent during the period:April 1, 2023 to March 31, 2026(3 Financial Years 2023-24; 2024-25; and 2025-26)
3.Patents granted during April 1, 2023 to March 31, 2024September 30, 2027The due date can be extended up to:Extension 1 (3 months): December 31, 2027: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2028 (USD 625 per month)If Extension 1 is not availed, then March 31, 2028 (6 months from due date) (USD 625 per month).For the working of the patent during the period:April 1, 2024 to March 31, 2027(3 Financial Years 2024-25; 2025-26; and 2026-27)
4.Patents granted during April 1, 2024 to March 31, 2025September 30, 2028The due date can be extended up to:Extension 1 (3 months): December 31, 2028: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2029 (USD 625 per month)If Extension 1 is not availed, then March 31, 2029 (6 months from due date) (USD 625 per month). For the working of the patent during the period:April 1, 2025 to March 31, 2028(3 Financial Years 2025-26; 2026-27; and 2027-28)

II. Due dates for filing SOW for expired/expiring patents:

SL. No.Time of Expiry of PatentDue Date to File SOWThe financial years for which the SOW is to be filed
1.Patents expired during April 1, 2023 to March 31, 2024September 30, 2024The due date can be extended up to:Extension 1 (3 months): December 31, 2024: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2025 (USD 625 per month)If Extension 1 is not availed, then March 31, 2025 (6 months from due date) (USD 625 per month).For the working of the patent during the period:April 1, 2023 to date of expiry(1 Financial Year 2023-24)
2.Patents getting expired during April 1, 2024 to March 31, 2025September 30, 2025The due date can be extended up to:Extension 1 (3 months): December 31, 2025: (USD 125 per month).Extension 2 (6 months above Extension 1): June 30, 2026 (USD 625 per month)If Extension 1 is not availed, then March 31, 2026 (6 months from due date) (USD 625 per month).For the working of the patent during the period:April 1, 2023 to date of expiry(2 Financial Years 2023-24; and 2024-25)

The FAQs issued by IPO address the issues that arose post notification of amended Rules with regard to the due dates for filing of SOW in India. The FAQ can be accessed here: https://ipindia.gov.in/writereaddata/Portal/News/1001_1_Final_FAQs_Form-27_26thAugust2024.pdf

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Discover Manisha Singh, founder of LexOrbis and seasoned IP lawyer with 23+ years of experience, known for providing business-focused solutions and advocating for India's IP system.
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Manisha Singh – Lex Orbis,
manisha@lexorbis.com

Manisha Singh – Lex Orbis

Manisha Singh, founder and managing partner of LexOrbis, is a highly reputed lawyer with more than 23 years of experience. Known for her astute understanding of IP laws and litigation nuances, Manisha provides practical and business-oriented solutions to a vast number of clients including many Fortune 500 companies, globally renowned universities, and public sector research organizations.

She has been instrumental in developing global portfolios of patents, designs and trademarks for many Indian companies and research institutions. She passionately pursues endeavors to strengthen India’s IP protection and enforcement system to align it with international standards and work closely with the industry associations and the government. She is a member of IPR committees of CII, FICCI and ASSOCHAM.

She was elected as the Vice-President of India Group of Asian Patent Attorney Association in 2019. Manisha is also the Standing Counsel for the Reserve Bank of India at the Delhi High Court and is known for her deep understanding of corporate, banking, and financial services laws. Manisha is a prolific writer and has contributed chapters in Indian IP laws to many leading publications including Mondaq, IP Media Group, Vantage Asia, Managing IP, Asia IP, CTC Media to name a few. She is consistently recognized for her contribution to the IP field by world-renowned organizations.

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