This Article is submitted by –
- Gaurav Sanghi
The Patent Rules came into force in the year 2003, since then there have been several amendments of which the latest amended rules were published in the official gazette dated, 19 October 2020.
Now and then, since 2003 Patent rules have seen changes and the latest amendment will see how the changes have been made and what necessary clauses have been added.
Under the simplified rules, patentees can mention approximate value and revenue accrued in the “Statement Regarding The Working Of Patented Invention(s) On A Commercial Scale In India”, instead of providing exact details of quantum and value of manufacturing and imports into India.
I. The first and foremost change has been made under the Filing of Priority Document, Rule 21.
- When an applicant files an international application, and has not compiled with rule 17.1 (a), (b) or (b-bis)*[1] of the PCT, the priority document shall be filed at the earliest before the time expires (31 months) as referred in rule 20 (4).
- An English translation which is duly verified by the applicant shall be filed before the time expires (31 months) as referred in rule 20 (4) where rule 51bis.1 (e) (i) or (ii)[2] is applicable.
- If the applicant fails to furnish the requirements as mentioned in 1 and 2, the Patent office can invite the applicant to file the priority document or the translation within 3 months from inviting. If the applicant again fails, the claim for the priority by the applicant shall be disregarded.
II. Rule 131 (2) has been substituted and marked as follows,
(2) The statements referred within rule 131 (1), shall be furnished once every financial year. The financial year starts immediately after the financial year in which the patent was granted to the applicant and the same shall be furnished within 6 months from the expiry of the financial year. *
III. Now, one form may be filed in respect of multiple patents, provided all of them are related patents, wherein the 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. In the second schedule, Form 27 has been substituted and is as follows:
The form reads, Statement regarding the working of the patented invention on commercial scale in India.
“The views of the authors are personal“
Reference
*Added (2020 rules).
[1] The priority document is in accordance with the administrative instructions, which is made available to the international bureau from the digital library prior to international application, the applicant may on request to IB obtain the document from the digital library.
[2]The international filing date has been accorded by the Office under Rule 20.3(b)(ii), 20.5(d) or 20.5bis(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of an element, the purposes of determining under Rule 82ter.1(b) whether that element or part is completely contained in the priority document concerned, in which case the national law applicable by the designated Office may require the applicant to furnish, an indication as to where that part is contained in the translation of the priority document.
