The Patent (Amendment) Rules, 2020 have come into force through Official Gazette notification dated October 20, 2020. Below is the brief overview of the amended provisions:
Firstly, the Amendment Rules, 2020 bring in various regulations of Patent Cooperation Treaty with regard to submission of the Priority Document, and English translation of the same (if applicable):
Submission of Priority Document
- The amendments now allow an Applicant to submit the Priority Document through a Digital Access Service / Digital Library under Rule 17.1(b-bis) of the PCT Regulations.
- With regard to submission of the English translation of the Priority Document, wherein earlier, the Applicant was required to submit the same, in case the Priority Document is not in English, now, submission of said translation is governed by specific regulations of the Patent Cooperation Treaty and unless the application falls under Rules 51bis.1(e)(i) and (ii) of the PCT Regulations.
- There are no changes with regard to the time limit for submission of the above documents.
Statement of Working
Further, the Amendment Rules, 2020 have brought in the provisions related to the form and manner in which Statement of Working of Patents is to be furnished, which is a mandatory requirement under the Patents Act, 1970.
- the requirement of furnishing the Statement of Working (Form-27) to be every financial year (i.e., 1st April to 31st March), instead of every ‘calendar year’ (1st January to 31st December).
- the time period within which such details should be furnished shall be within six months from the expiry of each such financial year. Meaning thereby, the Statement of Working of Patents (Form-27) may be furnished till 30th September of each such financial year.
- Statement of Working of Patents can now be submitted for multiple related Patents, subject to the following conditions:
In cases where approximate revenue/value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents; and All such Patents are granted to the same Patentee(s). licenses/sub-licenses granted in a given year need not be furnished anymore There is NO requirement of having to state whether the public requirement has been met at a reasonable price. obligation upon the Patentee(s)/Licensee(s) to provide an overview (in 500 words) of revenue/value accrued in India.