The filing of a Working Statement (regarding the working of patented inventions on a commercial scale in India) is a statutory requirement under the India Patents Act, 1970 (as amended) (the ‘Act’). Pursuant to the latest amendments to the India Patents Rules, 2003 (as amended) (the ‘Rules’) (read together with the Patents (Amendment) Rules, 2024 which came into effect on 15 March 2024)), the patentee/licensee now needs to furnish a Working Statement (under Form 27) once every three financial years, starting from the financial year immediately following the year in which the patent was granted, instead of filing it annually. For easy reference, as per local practice in India, a ‘financial year’ (‘FY’) begins on the 1st of April of each calendar year, and ends on the 31st of March of the next calendar year.
The first Working Statement in relation to a patent must be submitted within six months after the end of the financial year following the date of the patent grant, and subsequent Working Statements shall be filed within six months after the end of every third financial year thereafter. If the patentee/licensee fails to file this, the Controller may condone the delay or extend the time for filing the Working Statement for a period of up to three months, upon request. The patentee/licensee is required to indicate whether the patent has been commercially worked in India; if it has been worked, only a confirmation or indication is required, and no further information is needed.
This facilitates the exploration of commercial opportunities for both patentees and licensees, thereby benefiting all parties involved. Furthermore, the revised requirement to submit Working Statements at three-year intervals alleviates the burden on patentees/ licensees, while emphasizing the substantial commercialization of the patent over a three-year period, as opposed to a single year.
There was considerable confusion in calculating the deadline for filing Working Statements for patents granted before the coming into force of the said amendments. Accordingly, stakeholders approached the Controller General of Patents at the Indian Patent Office, for clarification. The Indian Patent Office (‘IPO’) issued a clarification vide an FAQ on August 26, 2024.
In respect of patents granted before FY 2022-23 financial year, the time period for filing the Working Statements for three financial years, i.e., FY 2023-24 to FY 2025-26 (without an extension of the deadline) will be from 1st April 2026 to 30th September 2026. In respect of patents granted in FY 2022-23, the three-year period starts from FY 2023-24, and the time period for filing the Working Statements (without an extension of the deadline) will be from 1st April 2026, to 30th September 2026.
The IPO has also clarified that in the case of patents set to expire in FYs 2023-24 and 2024-25, the patentee/licensee can file Working Statements for the remaining period only. For example, for patents that expire in FY 2023-24, the time period for filing the Working Statements (without an extension of the deadline) will be from 1st April 2024, to 30th September 2024. For patents expiring in FY 2024-25, the time period for filing the Working Statements (without an extension of the deadline) will be from 1st April 2025, to 30th September 2025.
To ensure that no statutory deadlines are missed in this regard, and to dispel any ambiguity in relation to the applicable deadlines to file the Working Statements do feel free to approach us for tailored advice on a case-to-case basis and for docketing purposes.