The Central Government, on October 19, 2020, in the exercise of the powers bestowed upon it u/Section 159 of the Patents Act, 1970 passed the latest Patent (Amendment) Rules of 2020. May 2019, the Indian Patent Office had published the draft rules of the Patent (Amendment) Rules, 2019 wherein the Office had taken into consideration all the objections and suggestions from the public with regards to the proposed amendments. After much scrutiny, on 22nd October, the Central government after considering all the suggestions passed the Revised Rules through Official Gazette Notification dated 20th October 2020.
The Highlights of the Patent (Amendment) Rules, 2020 are as follows:
1. As per the amendment to Rule 131(2), the statement with respect to the commercial working of patented inventions must be filed by every patent holder and licensee in every financial year (i.e. 1st April to 31st Mach) within 6 months from the beginning of the following financial year i.e. the following year, 30th.
2. The prescribed single Form 27, as per the latest amendment, can now be filed for more than one patent, the only prerequisite being that all the patents must be related to each other. Further, the approximate value/revenue acquired from one single patent is not allowed to be derived separately from the approximate value/ revenue acquired from its co-related patents. Thus, all patents will be granted to the same patent or license holder.
i) In cases where the patented invention has been worked on, then the approximate revenue/ value that the invention has gained in India by the patentee through importing and/or manufacturing process will have to be presented along with a brief report highlighting all the above-mentioned particulars.
ii) In cases where the patented invention has not been worked on, the reasons for not working on such a patented application along with the steps undertaken for working of the patented application will be required to be presented.
ii)The amendment also states the earlier requirements for submitting information with regards to the licenses and sub-licenses which is granted to a patent n a year; along with the information about the working of the patented invention ( whether working partly, adequately or in full capacity) is no longer required to be performed as per the amended form.
iv)Each licensee is required to file a statement if they are commercially working in an individual capacity.
v) The public requirement mandate concerning declaration by the patentee or licensee has also been done away with.
3. Rules for filing of the Priority Document and English Translation under Rule 21 for national phase patent applications has been amended in order to include compliance to the PCT requirements under paragraphs (a), (b) or (b-bis) or Rule 17.1 as per the Regulations of the Patent Cooperation Treaty. The time duration for submission of the priority document and English translation document remains unchanged.
The changes relating specifically to priority filing requirements under the Patent Amendment Rules, 2020 are discussed in detail in New Rules on Priority Filing Regarding Patents: Patent Amendment Rules, 2020.
The Amendments under the Patent (Amendment) Rules of 2020 have been carefully drafted to streamline the requirements of submission of statement of the commercial working of a patented invention under Form 27 and the submission of verified priority documents and English translation documents. The revised set of rules will substantially contribute to a smooth mechanism of filing a statement of commercial working of a patented invention in every financial year and will significantly ease the process of handling.
