Patents (Amendment) Rules, 2020- Key Highlights

Updated: Jan 18

Introduction


The Patent Amendment rules have come into force from 20th October 2020. The Rules modify Form 27 of the Act through which statements regarding the working of the patented invention on a commercial scale in India have to be filed by Patentees or Licensees.



Key Highlights


The Amendment rules had amended Rule 131(2). According to the new Amendment, the statement regarding the workings of the Patent has to be filed once in every financial year, within six months from the expiry of such financial year, due to which the due date for filing the same would be September 31st of every financial year.

The amendment has also done away with the requirement under Form 27 concerning declaration by the patentee or licensee to disclose whether the public requirement has been met.

Further, the filing of the Priority document under Rule 21 of the Rules has also been amended to include compliance to the additional requirements of paragraphs (a), (b) or (b-bis) of Rule 17.1 of the Regulations under the Patent Cooperation Treaty.

The prescribed form (Form 27) to file the statement regarding the 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 the 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 the 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.

The rules about the 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.


Conclusion


Ease filing of a statement of commercial working of the patent invention for every financial year is the main advantage played in this Amendment. Before the Revised Rules 2020, patentees and licensees were required to submit a statement of commercial working for every calendar year (January to December).


ABOUT THE AUTHOR

Swathi. Ashok. Nair is currently pursuing law at School of Legal Studies, Cochin University of Science and Technology

They can be contacted at swathiashoknair555@gmail.com or www.linkedin.com/in/swathi-ashok-nair-096253148.

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