Patents (Amendment) Rules, 2020

Patents (Amendment) Rules, 2020

November 27, 2020 By Dinesh Parmar

The Central Government through an Official Gazette notification published the Patents (Amendment) Rules, 2020 on the 20th of October, 2020 containing the revised rules.

In summary, amendments have been made to the timeline and content required while submitting the Statement of Working of Patents (Form 27) for a granted Patent and in respect of the requirements for filing priority documents and its verified English translation for PCT national phase applications in India.

The highlights of the Revised Rules 2020 are broadly set out below:

1. Filing of Priority documents (Rule 21)

The 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”.

According to sub-rule(1),  the applicant must file the priority document before the expiration of the time limit referred to in sub-rule (4) of Rule 20, if the International application has not complied with the requirements of paragraphs of Rule 17 of the PCT regulations.

“(2) When priority document referred to in sub-rule (1) is not in the English language, 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”.

According to sub-rule (2), an English translation of duly verified by the applicant of a person authorized by him must be filed within the time limit under sub-rule (4) of Rule 20, in cases where sub-paragraph (i) and (ii) of paragraph (e) Rule 5 of the PCT Regulations are applicable.

“(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.”

According to sub-rule (3), if the 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.

In summary, the filing of the Priority document under Rule 21 has been amended to include the additional requirements of paragraphs (a), (b) or (b-bis) of Rule 17.1 of the Regulations under the Patent Cooperation Treaty. However, the timeline for submission of the priority document and its verified English translation remains the same.

2. Statement of Working of Patent (Form 27)

The amended rule 131, for sub-rule (2) now states:

“(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 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.”

According to the amended rules, the statement of working of a patent is to be filed by the patentee or licensee once every financial year, within six months from the expiry of such financial year (i.e. within 30th day of September each year).

If we take an example wherein the Patent is granted for an application on 01st day of October, 2020. The statement of working for the said patent will be furnished within six months from expiry of the next financial year (2021-2022) commencing immediately after the current financial year (2020-2021) in which the patent was granted i.e. within 30th day of September, 2022.

Further, the Form 27 format has also been revised, wherein a single Form 27 can now be filed for multiple patents, provided all the patents are related  and the approximate revenue or value accrued from a single patent cannot be derived separately from the approximate revenue or value accrued from its related patents, and all such patents are granted to the same patentee. Every 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.

3. Patents (2nd Amendment) Rules, 2020

The amended rule 7 now states:

(3) In case an application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person or startup or small entity, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person or startup or small entity and the fee(s) chargeable from the person other than the natural person or startup or small entity in the same matter shall be paid by the new applicant with the request for transfer.

“Explanation— Where a startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.”

[(3A)  In case an application processed by a small entity is fully or partly transferred to a person other than a natural person, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than the natural person (except a small entity) in the same matter shall be paid by the new applicant with the request for transfer.]

[(3B)  In case an application processed by a startup is fully or partly transferred to a person other than a natural person, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than the natural person (except a small entity) in the same matter shall be paid by the new applicant with the request for transfer.

Explanation - Where the startup ceases to be a startup after having filed an application for patent due to lapse of more than five years from the date of its incorporation or registration or the turnover subsequently crosses the financial threshold limit as defined, no such difference in the scale of fees shall be payable.]

The amended proviso to sub-rule (5) of rule 24C now states:

The Controller shall refer the request for expedited examination along with the application and specification and other documents to the examiner, in respect of the applications where the request for expedited examination has been expedited received, in order of filing of such requests.

Provided that a request for expedited examination under this rule filed by a startup or small entity shall not be questioned merely on the ground that the startup or small entity, having filed an application for a patent, ceases to be a startup or small entity after having filed an application for patent due to the lapse of more than five years from the date of its incorporation or registration of the period during which it is recognised by the competent authority,  or the its turnover subsequently crossed the financial threshold limit as notified by the competent authority, as defined.

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