The Department for Promotion of Industry and Internal Trade (DPIIT) amends the Patent Rules, 2002: – Eshwars
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The Department for Promotion of Industry and Internal Trade (DPIIT) amends the Patent Rules, 2002:

Authored by N V Saisunder

The Department for Promotion of Industry and Internal Trade (DPIIT) of the Ministry of Commerce and Industry, vide notification dated 19th October 2020, has amended certain rules under the original Patent rules 2003, pursuant to the Patents (Amendment) Rules, 2020.(“New Rules”). The New Rules have been brought into force by the DPIIT to boost the aspect of “Ease of doing business” in India and reduce compliance hassles.

As per the New Rules:

1. PRIORITY DOCUMENT:

Rule 21, which contains provisions on filing of priority document has been substituted as follows:

“21. Filing of priority document – (1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.

(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.

(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.”

2. STATEMENT OF WORKING

The furnishing of working of patents required by the patents office under section sub-section (2) of section 146 would now have to be done once in respect of every financial year starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such financial year, as opposed to the previous deadline of furnishing the workings within three months of the end of each calendar year.

3. Form 27, in the second schedule is amended and now one form may be filed for 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(s). The amended Form 27 has also dispensed with the requirement of: (a) identifying licenses/sub-licenses in a given year and (b) as to whether a public requirement out of a patent has been met at a reasonable price. Also, the amended form requires the patentee to provide details of the patent(s) that are worked or not worked in 500 words.

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