India: The Patents (Amendment) Rules, 2020 Effective from October 20th, 2020

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The Department for Promotion of Industry and Internal Trade (DPIIT) notified the Patents (Amendment) Rules, 2020 dated October 19th, 2020. The Patent Amendment Rules, 2020 are effective from October 20th, 2020. The existing patent rules 21 and 131 (2) are revised in the present amendments and the revised rules modify the requirement of filing a priority document and English translation thereof as well as Form 27. The main aspects of the revised rules 2020 are broadly set out below:

(I) Amendments for filing of priority documents and English translation

The revised rule 21(1)-(3) for filing of priority documents and an English translation for National phase patent applications now include the additional requirements of paragraphs (a), (b), or (b-bis), (d) of Rule 17.1 and 51bis.1(e)(i) and (ii)of the Regulations under the Patent Cooperation Treaty, yet, the time period for the submission of the priority document and English translation will remain unchanged.

Patent Amendment Rules 2020

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(II) Amendments for filing Form-27

As per the amendment to Rule 131 (2), the statement regarding the working of the patented invention on a commercial scale in India (Form 27)have to be filed by every patent holder once in respect of every financial year, within 6 months from the expiration of the financial year, due to which the due date for the filing form 27would be the September 30thof each year.

The prescribed Form 27, to file the statement regarding the commercial working of a patented invention, has also been modified in the present amendments. Following are the amendments made to Form-27 by way of current amended rules.

a. The patentee/ licensee is required to submit the approximate revenue/ value accrued in India against the exact “quantum” and “value”  through manufacturing in India/import into India of the patented invention.

b. The requirement to provide the details of licensees and sub-licensees was removed in the amended form.

c. Also, the requirement of declaring whether the public requirement has been met by the patentee or licensee was removed in the amended form.

d. The amended rules allow patentee/licensee to file a single Form 27 for multiple patents, provided that all such patents are related patents, and the approximate revenue/value accrued from a single patent cannot be derived separately from the approximate revenue/value accrued from its related patents, and all such patents are granted to the same patentee(s).

Practical Takeaways

The verified English translation of the priority document has to be submitted to the patent office only when the national phase patent application falls under Rules 51bis.1(e)(i) and (ii) of the PCT Regulations. Also, as per amended rules, the due date for filing Form 27 would be September 30thof every financial year.

About the author: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

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