Highlights to Patents (Amendment) Rules, 2020

In exercise of the powers conferred by Section 159 of the Patents Act, 1970, the Central Government has, on 19th October 2020, amended the Patents Rules, 2003 vide the Patents (Amendment) Rules 2020.

The key changes to the Patents Rules, 2003 by the Patents (Amendment) Rules 2020 are:

Rule 21 – Filing of the priority document

Sub-rule (1): In reference to the submission of priority document for International applications designating India as an International Search Authority under the Patent Cooperation Treaty (“PCT”), the applicant must file the priority document before the expiration of the time limit stated in sub-rule (4) of Rule 20, if the International applicant has not complied with the requirements of paragraphs of Rule 17.

Sub-rule (2): In cases where sub-paragraph (i) and (ii) of paragraph (e) Rule 5 of the PCT Regulations are applicable, International applicants must file copies of the English translations duly verified by the applicant of a person authorized by him within the time limit under sub-rule (4) of Rule 20, Patent Rules 2003

Sub-rule (3): In cases where International applicants do not comply with Sub-rule (1) & (2), the Indian Patent Office will invite the applicant to submit the priority document or the English translations within three months from the date of the invitation. If the applicant fails to comply with the invitation, the Patent Office will not take the claimed priority into consideration.

Rule 131, sub-rule (2)

Patentees and licensees must file the statement regarding working of patented inventions (Form 27), for every financial year i.e., 1 April to 31 March, within 6 months from the start of the following financial year i.e. by 30th September of the succeeding year which was earlier 3 months from the end of the calendar year. Previously, patentees & licensees were required to furnish details present in Form 27 for every calendar year and not the financial year.

 Form 27

The new Form 27 provides a provision for patentees and licensees to file a single Form for multiple patents provided all the patents are related. A short brief provided in the Form explains that in cases where the revenue generated or value accrued from a specific patent cannot be estimated and all such related patents have been granted to the same person, the patentee can submit one Form 27 for all such patents. The new Form 27 also requires the patentee/licensee to give a brief in respect of approximate revenue/value accrued in India not exceeding 500 words. Lastly, Form 27 also requires reasons to be provided towards non-working of the patented invention and steps being taken for working of the invention within the limit of 500 words, when earlier there was no limit.

Conclusion

All amendments are a welcoming move and amendments with respect to Rule 21- Filing of priority document will save time and cost for the of the Patentee. Amendments under Rule 131, sub-rule (2), with respect to the extension of time frame from 3 months to 6 months will enable the Patentees to comfortably provide correct and accurate details of revenue/value as a larger period will also take into account the returns made by licensees or customers of the product covered by the patented invention. Lastly, amendments under Form 27 with respect to filing multiple related patents in a single universal form will make the filing process as an easy-going and simple process.