Amendments to Rules 21 and 131(2), and its implications

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The Central Government in exercise of the powers conferred upon it u/s 159 of the Patents Act, 1970 (“The Act”) has passed the Patent Amendment Rules of 2020 (“The Rules”) on 19th of October, 2020. The rules aim to boost innovation while easing the burden on the patentee. The amendments to the Rules help in accelerating and easing the process of doing business in India for innovators. Particularly, the Rules include changes to Form 27, wherein the statements regarding the working of patented innovations on a commercial scale in India need to be filed by the Patentees or the Licensees.

The amendment has simplified the requirements related to submission of Form 27 by narrowing the compliance that need to be followed under Patent Rules by the patentee in the following manner:

  • The amendment provides flexibility to the patentee for filing a single Form 27 in respect of single or multiple related patents.
  • The approximate value corresponding to a single patent cannot be derived separately from approximate value corresponding to each of the related patents, and all such patents are granted to the same patentee or licensee. Accordingly, if there is a grant of patent to two or more persons, they may jointly file a Form 27.

The amended Rule 131(2) indicates that the time period for the patentee to furnish the information required in Form 27 shall now be once in every financial year i.e., within 31st of March of every year, unless specifically asked by the Controller. The information in Form 27 is required to contain details pertaining to the preceding calendar year, commencing soon after the financial year in which the patent was granted. Further, the details need to be furnished within 6 months instead of the current 3 months from the expiry of each financial year and hence the due date for filing will be 31st September of every financial year.

Further, The Rule 21 now includes compliance to additional requirements of paragraph (a), (b) or (b-bis) of rule 17.1 of the Regulations under Patent Cooperation Treaty (PCT). According to the amendment to Rule 21, the statement is regarding the verified English translation of priority document. The amendment indicates the following:

  • A patentee filing an international application designating India, who has not complied with the requirements of filing priority documents under the regulations of the PCT, is required to file the priority documents with the Indian Patent Office.
  • The applicant is not required to submit the priority document to the Indian Patent Office if the priority document is available in the World Intellectual Property Organization’s digital library.

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