The India Ministry of Commerce and Industry has issued a notification that the Patents (Amendment) Rules, 2020, was released and enforced on 19 October, 2020.

In summary, the key amendments have an impact on the requirements for filing priority documents and its verified English translation, as well as the timeline and content required when submitting the Statement of Working for a granted patent in India:

  1. The requirements for submitting priority document(s) has been amended to broaden the exception to include situations under Rule 17.1(b-bis) of the PCT Regulations, wherein the applicant asks the Receiving Office to obtain the priority document from a digital library. Furthermore, submission of an English translation is only required when the validity of the priority claim is relevant to determination of patentability or when errors in the international filing date have been corrected (Rules 51bis.1(e)(i) and (ii) of the PCT Regulation).
  2. A Statement of Working for a granted patent will have to be filed for each financial year (beginning 01 April) instead of the calendar year as previously stipulated, starting from the financial year commencing immediately after the grant of the patent. Further, the statements can be submitted within six months from the expiry of each financial year.

Practice Recommendations

Submission of priority document

If a priority document is made available to the International Bureau from a digital library under Rule 17.1(b-bis) of the PCT Regulations, the Applicant need not submit the priority document. In addition, a verified English translation of the priority document no longer needs to be filed unless the application falls under Rules 51bis.1(e)(i) and (ii) of the PCT Regulations.

Statement of Working

Accordingly, for the upcoming reporting, the Statement of Working for patents granted before 01 April 2020 can be submitted from 01 April 2021 to 30 September 2021. Relevant information from the period 01 April 2020 to 31 March 2021 will need to be submitted.

For more details of the amendments to the India Patent Rules, please refer to the write-up below.

I. Priority document

The previous Rule 21 stipulated that a priority document is not required to be filed if the same has been filed at the Receiving Office under Rules 17.1(a) and 17.1(b) of the PCT Regulation. In addition, it was also stipulated that a verified English translation of the priority document had to be filed in all national phase applications if the priority document was not in English.

Previous Rule 21 states:

"(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraph (a) or paragraph (b) of rule 17.1 of the regulations under the Treaty, the applicant shall file with the patent office the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20.

(2)Where priority document referred to in sub-rule (1) is not in the English language, 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 appropriate 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."

Amended Rule 21 states:

"(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."

The amendments to Rule 21 broadens the exception to include Rule 17.1(b-bis) of the PCT Regulations, where the applicant asks the Receiving Office to obtain the priority document from a digital library.

In addition, according to amended Rule 21, the Patent Office can ask for submission of a translation only when a case falls under Rules 51bis.1(e)(i) and (ii) of the PCT Regulations i.e. only when:

  1. the validity of the priority claim is relevant to determination of patentability, or
  2. errors in the international filing date have been corrected (under Rules 20.3(b)(ii) or 20.5(d) on the basis of the incorporation by reference under Rules 4.18 and 20.6 of the PCT regulations).

II. Changes to Statement of Working

As per the Indian Patent (Amendment) Act, 2005 under Section 85, the Patents should be worked in India on a commercial scale and to the fullest extent within the territory of India and the patented article should be available at reasonably affordable prices to the public in India.

Every patentee and licensee is required to furnish a periodical statement specifying the extent to which a patent has been commercially worked in India. Previously, such statement was to be furnished every calendar year within three months of the end of each year under Section 146 (2) of the Patent (Amendment) Act. 1970 and Rule 131 of the Patent Rule, 2003. This means that every patentee and every licensee had to file a working statement by 31 March of the year outlining the information regarding the commercial working of patent in the previous calendar year.

Previous Rule 131(2) states:

"The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year."

The amended Rule 131(2) states:

"The statements referred to in sub-rule (1) shall be furnished 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."

The amendment to Rule 121(2) means that the Statement of Working for a granted patent will have to be filed for each financial year (as opposed to calendar year) starting from financial year commencing immediately after the grant of the patent. The financial year is taken to begin on 01 April.

In addition, the deadline to submit the Statement of Working is now 6 months from the expiry of the financial year, as opposed to the previous deadline of 31 March every year (3 months from the end of calendar year). As the financial year is taken to be 01 April to 31 March of the subsequent year, the Statement of Working must be submitted latest by 30 September for the relevant financial year.

Amendments have also been made to Form 27 (Statement Regarding the Working of Patented Invention(s) on a Commercial Scale in India). The amendments are detailed below.

  1. The amended form allows patent holders to submit a consolidated statement for 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.
  2. Removal of the requirement of identifying licenses/sub-licenses in a given year.
  3. Removal of the requirement of having to state whether the public requirement has been met at a reasonable price.
  4. Details for patents that are worked or not worked are to be provided in 500 words.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.