The Central Government notified on 19 October 2020, the Patents (Amendment) Rules, 2020 (“2020 Rules”) that amend the Patents Rules, 2003. Indian practice of patent prosecution and procedure now finds itself in greater alignment with international practice regarding the submission of priority applications and their translations with these amendments.
The Indian Patent Office has already permitted applicants, in practice, to submit digital versions of priority documents using DAS. Amended Rule 21 Sub-rule (1) clarifies that a priority claim would be allowed even if it is made available using a digital library, i.e. DAS. This is in accordance with paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty (PCT).
The amendments also provide that only in two circumstances verified English translations of priority documents will only need to be submitted to the IPO:
When the validity of the priority claim is necessary to determine if the invention concerned is patentable; or
When the international application filed was incomplete and the applicant claims that the missing information was fully contained in the priority document. This rule applies the paragraph (e) of rule 51bis.1 of the regulations under the PCT.
This rule reduces the high cost previously borne by applicants for the translation of priority documents.
Amended Rule 21 Sub-rule (3) provides that if the applicant does not comply with the requirement of submitting the priority documents or their translations within 31 months of the priority date, the Controller could invite the applicant to cure this defect. The applicant must submit priority documents or their translations within three months of the date of request by the Controller. If the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.
The Rules modify Form 27 of the Indian Patent Act through which statements regarding the working of patented invention on a commercial scale in India have to be filed by Patentees or Licensees. According to the amendment to Rule 131(2), the statement regarding the workings of Patent have to be filed once in every financial year, within six months from the expiry of such financial year, due to which the due date for filing the same would be September 31st of every financial year.
Further, a single Form 27 can now be filed for multiple patents, provided all of them are related patents, and the approximate revenue/value accrued from a single patent cannot be derived separately from the approximate revenue/value accrued from its related patents, and all such patents are granted to the same patentee or licensee.