Understanding on India’s Revised Patent Rules On Priority filing w.e.f 19 October, 2020

The Indian Patent office has issued a notification that the Patents (Amendment) Rules, 2020, was released and enforced on 19 October, 2020. Here we are going to review the key points regarding the revised Patents (Amendment) Rules, 2020.

Statement of Commercial Working

• The statement of commercial working of a patented invention will have to be filed by every patentee and every licensee for every financial year (1 April to 31 March) within 6 months from the start of the following financial year i.e. by 30 September of the following year.

Previous Rule 131(2) states:

“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 amended Rule 131(2) states:

“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.”

Form 27

The prescribed form (Form 27) to file the statement regarding commercial working of a patented invention has also been amended whereby one form can be submitted for related patents with the following information:

• In case the patented invention has been worked, approximate revenue / value (instead of quantum and value) accrued in India to the patentee through manufacturing and/or importing along with a brief write-up on the same will have to be provided.
• In case the patented invention has not been worked, reasons for not working the patented invention and steps being taken for working of the patented invention will have to be provided.
• The requirements of submitting information regarding licensees and sub-licensees granted in a year; and information regarding extent of working (partly, adequately, fullest) of the patented invention has also been done away with in the amended form.
• While patentees can jointly file the statement of commercial working, each licensee will have to file the statement of commercial working individually.

Filing of Priority Document

The requirements for submitting priority document(s) has been amended to broaden the exception to include situations under Rule 17.1(b-bis) of the PCT Regulations, wherein the applicant asks the Receiving Office to obtain the priority document from a digital library.

Previous Rule 21 states:

“(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.”

Amended Rule 21 states:

“(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.”

English Translation

Further, the rules in relation to filing of priority document and English translation (if applicable) for Indian national phase patent applications has been amended to include certain PCT regulations. However, the timeline for submission of the priority document and English translation remains the same.