India: Patent Amendment Rules, 2020 Notified

The Ministry of Commerce and Industry has notified the Patent (Amendment) Rules, 2020 to further amend the Patents Rules, 2003. The Draft Patent (Amendment) Rules, 2019 were circulated on May 31, 2019, and have come into force with effect from October 19, 2020.

The new Rules have an implication on the requirements relating to the Annual Working Statement and Priority claims.

Annual Working Statement:

1. The time window for filing the Annual Working Statement of a patent has been changed to the Financial Year (April-March) from the erstwhile requirement of filing the same during the Calendar Year (January-December).

2. The Annual Working Statement is now required to be furnished once in respect of every financial year, starting from the financial year commencing immediately after the grant of a patent.

3. The patentees are required to file the Annual Working Statement on the commercial working of the patent within six months from the expiry of each such financial year in order to establish the commercial working of granted patents in India. The date of filing the Annual Working Statement has been changed from March 31 to September 30 each year.

4. There have been further modifications in the format of Annual working Statement-

a) The new Rules allow patentees to mention ‘approximate value’ and ‘revenue accrued’ instead of providing “quantum” and ‘precise value’ of the patented product.

b) The Rules have done away with the requirement concerning declaration by the patentee to disclose whether the public requirement has been met and the requirement of mentioning details of licenses and sub licenses during a year.

5. The new format allows Patentees to file ‘one form’ in respect of multiple patents, provided:

a) all such patents are related patents, and

b) the approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and

c) all such patents are granted to the same patentee(s).

6. The new Rules clarify that where a patent is granted to two or more persons, all such patentees may file this statement jointly, however, if there are licensees to a patent, each licensee has to file a statement individually.

7. The new Rules also clarify that only the Patentee(s) /Licensee(s) and Authorised Agent(s) furnishing the statement can sign the Annual working statement.

In view of the above, we will remind our clients about the due date for filing the Annual Working Statement in the month of March every year instead of the usual practice of sending annual reminders in the month of December.

Formal requirements with regard to priority claims:

1. In reference to submission of priority document, Rule 21 (1) now includes the mention of the WIPO Digital Access Service under para b-bis of Rule 17.1 of PCT. Accordingly, if the priority document is not submitted under para (a) or para (b) or para b-bis of Rule 17.1 of PCT, the Applicant will be required to furnish the priority document before the expiration of the 31-month deadline.

2. Under newly introduced Rule 21(2), the Indian Patent office may require the English translation of priority document to be submitted under the given two conditions:

a) where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or

b) where the international filing date has been accorded by the Receiving Office to an international application on the basis of the statement of incorporation of reference of an element or part under Rules 4.18 and 20.6 of PCT.

In such cases for the purposes of determining whether that element or part is completely contained in the priority document, the Indian Patent Office may also require the applicant to furnish an indication as to where that part is contained in the translation of the priority document.

c) The timelines prescribed by Rule 21(3) remain unchanged. If the applicant does not comply with the aforementioned requirements under Rule 21 (1) and 21(2), the Patent Office shall invite the applicant to file the priority document and/ or the translation thereof within three months from the date of such invitation. Failure to meet the said deadline shall lead to disregard of the priority by the Patent office.

The new Rules provide certain modifications in Rule 21 of the Indian Patent Rules, 2003 to include certain PCT regulations, however, the timelines for submission of priority documents and English translations remain unchanged. The new Rules can be accessed here.