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UNDERSTANDING THE AMENDMENTS MADE TO THE PATENTS RULES, 2003 BY 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:

1. Rule 21 which deals with the ‘Filing of priority documents’ has been substituted in place of erstwhile Rule 21

  • In sub-rule (1) of newly added Rule 21, the Applicant is now also required to comply with rule 17.1[1] b-bis of the PCT[2] Regulations in addition to Rule 17.1 (a) and (b). However, such compliance is subject to situations contemplated in Rule 17.1 (d) of the PCT Regulations. Thus, India will not disregard the priority claim if the earlier application was filed with its Patent office in its capacity as National Office or if the priority document is, in accordance with the Administrative instructions, available to Indian Patent Office from a digital library.
  • The newly substituted sub-rule (2) to Rule 21, the requirement of providing a translation if the document is not in English language has been done away with. An English translation is only required if conditions mentioned in sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of Rule 51bis.1[3] of the PCT Regulations are applicable.
  • No effective change has been made in sub-rule (3) of Rule 21.
  • A comparison of the old and new Rule 21 of the Patents Rules, 2003 is provided herein below. The portions signifying change in the law have been emphasised in bold letters.
Old Rule 21New Rule 21
Sub-Rule 1New Sub-Rule 1
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.  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.
Sub-Rule 2New Sub-Rule 2
(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.  (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.
Sub-Rule 3New Sub-Rule 3
(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.(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.

2. Sub-rule 2 of Rule 131 which deals with ‘Form and manner in which statements required under Section 146(2)[4] to be furnished’ has been substituted in place of erstwhile Rule 131 (2).

  • Earlier, the statement regarding the working of the invention had to be filed on a calendar year basis. Now, it has to be filed on a financial year basis.
  • Earlier, the statement had to be filed within three (3) months from the end of calendar year to file the statement. Now, the time period has been extended to six (6) months from the end of financial year.
  • Further, the statement has to be filed from the financial year commencing immediately after the financial year in which the patent was granted.
  • A comparison of the old and new sub-rule (2) of Rule 131 of the Patent Rules, 2003 is provided herein below. The portions signifying change in the law have been emphasised in bold letters.
Old Rule 131 (2)New Rule 131 (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.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.

3. In the Second Schedule to the Patents Rules, 2003, a new Form 27 has been substituted for the old form 27

From a perusal of the new Form 27 it is apparent that:

  • From now on, one form may be filed in respect of multiple patents, provided all of them are related patents and of same patentee, wherein the approximate revenue/value from a single patent cannot be derived separately.
  • Through the form, data is sought on a financial year basis.[5]
  • Now, the Patentee is not required to state as to whether public requirement has been met or not.
  • The Patentee is also not required to file country wise details of import in India of the patented invention, just the approximate total revenue/value.
  • Further, the Patentee is also not required to provide the details of licenses and sub-licenses granted during the year the form is filed in.
  • Instead of earlier seeking ‘quantum and value (in Rupees) of the Patented product’, the new form requires Approximate revenue / value accrued in India to the patentee(s)/ licensee furnishing the statement’. Thus, it appears the government does not require the number of products sold under the patented invention but just the monetary value of sales made as it has removed the word ‘quantum’ and has used ‘revenue/value’.
  • The new form also requires the Patentee/Licensee to give a brief in respect of approximate revenue / value accrued in India not exceeding 500 words.
  • Now, there is a limit of 500 words to provide the reasons towards non-working of the patented invention and steps being taken for working of the invention when earlier there was no limit.
  • The form further states that “patentee and every licensee (exclusive or otherwise) is required to file this Form; where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, each licensee shall file this Form individually”. Thus, Patentees now can jointly file the statement of working but each licensee will have to file the statement of commercial working individually.

Conclusion

Thus, broadly changes are pertaining to priority documents and statement of working of patent on a commercial scale in India.  A perusal of changes made via newly substituted Rule 21 reflects compliance with the Patents Co-operation Treaty. Further, we believe that not requiring English translation in all cases where priority document is not in English is a welcome move and will save time and cost of the Patentee.

The changes made via newly substituted Rule 131 (2) is also a welcome move as the accounting standard for revenue is uniformly a financial year and not calendar year. Further, the extension of filing the statement of working to six months from earlier three months will also enable the Patentees/Licensees 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.

Further, changes made to Form 27 are also a welcome move as they enable a single form filing for multiple related inventions. They come across as intending to make filing Form 27 swift and not cumbersome. However, the removal of the word ‘quantum’ from Form 27 in our view was not required.


[1]Rule 17 – The Priority Document 17.1 – Obligation to Submit Copy of Earlier National or International Application (a)  Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b-bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.

(b)  Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.

(b-bis)  Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.

(c)  If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.

(d)  No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.

[2] Patent Cooperation Treaty

[3] Rule 51bis.1 (e)  The national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required:

(i)  where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or

(ii)  where the international filing date has been accorded by the receiving Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element or part, for the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may also require the applicant to furnish, in the case of a part of the description, claims or drawings, an indication as to where that part is contained in the translation of the priority document.

[4]Section  146. Power of Controller to call for information from patentees. – …” (2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.”

[5] As required under the newly inserted sub-rule (2) of Rule 131.

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