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Legal Requirements to keep a registered patent alive in India

A patent grant gives a patentee the exclusive right to make or use the patented article or the patented process. A patentee can prevent all others from making or using the patented article/process until the patent expires i.e. for 20 years from the date of filing in India. The patentee also has the right to assign the patent, grant licenses under, or otherwise deal with it for any consideration.

For the grant, the Patent system in India is governed by the Patents Act, 1970 (No. 39 of 1970) & The Patents Rules 1972, effective from April 20, 1972. According to this Act, an invention means any new product or process, method or manner of manufacture; the machine, apparatus or other articles; or substance produced by manufacture involving an inventive step and capable of industrial application.

But the rights of the Patentee are circumscribed by various conditions and limitations which are mandatory to be abided after the grant of the patent. The requirements are (a) payment of the renewal fees and (b) working of the invention, failure of which may lead to the patent being lapsed or revoked by the Controller General of Patents, Trademark and Designs, India.

PAYMENT OF THE RENEWAL FEE

Renewal fee is to be paid every year with the first renewal fee becoming payable for the third year with respect to the date of filing. The first renewal fee must be paid before the end of the second year and in case the patent has not been granted within two years, renewal fees will be accumulated and paid immediately after the patent is issued, or within three months of its recorded in the register of the Patents. Further, in cases where the patentee fails to pay the renewal fee, he can still save his interests in the patent within an extended period of 9 months, by paying extension fees of six months in the prescribed Form No. 4 of The Patents Act, 1970, from the recorded date.

It is to be noted that the renewal fee is not payable during the pendency of the application for a patent, it is payable upon the issue of the patent within three months of record in the Patent Register, failure of which leads to the lapse of the patent.

WORKING OF THE PATENT/ INVENTION

Section 146(2) of the Patent Act states that the patentees and licensees are required to submit a statement as to the extent to which the patented invention has been worked on the commercial scale on the prescribed form 27 to the Controller every year. Failure to comply with this requirement will be considered as if “the patented invention is not worked in the territory of the India” which is one of the grounds to get the compulsory license as per section 84.

Additionally, it is also a valid basis to get the patent revoked. Further, the refusal or failure to submit the information of working of the patent, when asked by the Controller under section 146, is a punishable offence which includes a fine up to ten lakh rupees. Also, if the information or statement furnished by the patentee is found to be false, the patentee is punishable with imprisonment which can be extended to six months or with fine or both.

Having said this, Patentee needs to keep the track for the payment of renewal fees of the patent and also ensure the submission of working of the patent every year through Form 27 to keep the patent alive until the term of the patent in India. The patentee can fulfil these requirements by submitting the documents/fees himself or through Patent Agent/Patent Attorney in India.

Reference- The Patents Act, 1970 (No. 39 of 1970), India

United IPR

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