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06 Jun 2019

Proposed Patents (Amendment) Rules, 2019

The Government of India, Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade) vide its notification dated May 31, 2019, has published the draft Patents (Amendment) Rules, 2019[i] (hereinafter the “Rules”) which is now open to the Public for objections or suggestions, if any.

The proposed amendments are as follows:

Rule 21: Filing of Priority Documents: The proposed Rules substitute:

Rule 21(2): “Where priority document referred to in sub-rule (1) is required to be filed under Rule 51bis.1 (e) of Regulations under the Treaty, and if it is not in the English language, an English translation thereof duly verified by the applicant or the person duly authorized by him shall be filed within three months from the date of inviting to file it by the Appropriate Office.”

 Rule 21(3): “Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the claim of the applicant for the priority shall be disregarded for the purposes of the Act.”

Analysis: The proposed amendments which substitute Rule 21(2) and (3) of the Patents Rules, 2003 (Principal Rules) are merely simplification and clarification in nature and there has been no change in the timeline of filing the translation of the document whatsoever.  A closer view on this would be that an English translation of the priority document can be filed within 3 months from the date of receiving a demand/objection from the Patent office to that effect.

Rule 131: Statement of Working: The proposed Rules substitutes:

Rule 131(2): “The statements referred to in sub-rule (1) shall be furnished once in respect of every calendar year, starting from the calendar year commencing immediately after the calendar year in which the patent was granted, and shall be furnished within 3 months from the expiry of each such calendar year.”

Analysis: Again, the proposed amendment which substitutes Rule 131(2) of the Principal Rules is merely simplification and clarification in nature as the timeline remains the same. In simple terms, a statement of working of the Patent for each calendar year is to be filed within 3 months immediately after the expiry of each calendar year.

Second Schedule: Form 27: The proposed Rules bring out certain crucial changes in Form 27 which are:

  1. the proposed changes clarify that where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, in case of a license, each licensee shall file this Form individually;
  2. The new Form has segregated the product patent with that of the process patent wherein the accrued values need to be provided separately. It does not seem to be logical, considering if a patent is for both product and process, how would a Patentee segregate the amount and moreover why does it matter to the Government as long as it gets the value from a Patent?
  3. The new form brings out some relief to the Patentees through a provision wherein if the value accrued from a particular patent cannot be derived separately considering multiple patents are involved in the same product/process, the patentees can provide an approximate value derived from all the Patents together, provided all such patents are granted to the same patentee(s).
  4. The new form has removed the requirement of providing a statement whether a public necessity has been met by working on such patent.
  5. The new form has also got away with the requirement of providing country wise details, if the patent’s product/process was imported from more than one country.

The proposed amendments, if implemented as is, would surely bring out some clarifications in their respective Rules however there remains scope for further simplification at least in the case of Form 27. All interested parties could reach out to the DPIIT within 30 days with their objections and suggestions, if any.

 

[i] http://www.ipindia.nic.in/writereaddata/Portal/News/530_1_Draft_Patents_Rules_2019.pdf

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