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Patents (Amendment) Rules, 2020- Comes into force!!

November 3, 2020

The Ministry of Commerce and Industry (Department for Protection of Industry and Internal Trade) vide its notification dated October 19, 2020 released the Patents (Amendment) Rules, 2020[1].

Also read Patent Amendment Rules, 2019 comes into force

AMENDMENTS TO THE PATENT RULES

While the patent filing process has been made easier, following are the key highlights of the changes/substitutions brought about in the amended Patent Rules:

PRE-AMENDMENT POST-AMENDMENT COMMENTS
Rule 21

Filing of Priority Document

(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraph (a) or paragraph (b) of rule 17.1 of the regulations under the Treaty, the applicant shall file with the patent office the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20.

(2) Where priority document referred to in sub-rule (1) is not in the English language, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.

(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the appropriate office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.

 

Rule 21

Filing of Priority Document

(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.

(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.

(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.

The amended Rule 21 has been harmonized to include PCT regulations. This provision now explicitly puts in writing what has already been in practice, i.e. submission of a copy of Form PCT/IB/304 at Indian Patent Office to suffice the requirement of filing a priority document. Although, the deadlines for filing priority documents and English translation of the documents remain unaltered.

 

 

 

 

 

 

 

 

 

 

 

 

 

Rule 131(b)

Form and manner in which statements required under section 146(2) to be furnished

(2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.

 

Rule 131(b)

Form and manner in which statements required under section 146(2) to be furnished

(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every financial year, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year.”

Earlier, statements on Form 27 were supposed to be furnished within three months of the end of each calendar year. Now, according to the amendment, statements on Form 27 shall be furnished within six months (rather than three months) from the expiry of each financial year (rather than calendar year). Thus, according to the new Rules, Form 27 for the previous financial year can be filed by 30th September of the subsequent financial year.
Form 27

Statement regarding the working of the patented invention on commercial scale in India

Separate Forms were to be filed in respect of multiple patents belonging to a single patentee, even when the patents were related to each other and their revenue could not be separately calculated.

Form 27

Statement regarding the working of the patented invention on commercial scale in India

A single commercial working statement (on Form 27) may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue/value accrued from a particular (single) patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s).

 

 

Instead of filing separate commercial working statements for each related patents (all belonging to a single patentee), now a single commercial working statement filed on Form 27 for said related patents would suffice the requirement.

Additional changes in Form 27

  • Earlier patentees were required to enter exact amount of revenue accrued, but now only APPROXIMATE value is sufficient.
  • Statement regarding public requirement met “partly/adequately/to the fullest extent” or not has now been done away with.
  • Country wise details of import are not required to be submitted now.

Details of licenses and sub-licenses granted are not required to be submitted now

 

 

The aforesaid legislative changes brought about by the Ministry is a commendable move as it simplifies the process of patent prosecution by allowing filing of one form for multiple related patents. Past decade has witnessed some path breaking changes brought about in the Patenting landscape in India to encourage innovations, research and development and adequate protection of the same under the Indian Patent Law.

[1] http://www.ipindia.gov.in/writereaddata/Portal/Images/pdf/patents_amendment_rules_2020.pdf

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