India: Draft Patent (Amendment) Rules, May 2019
The Department of Industrial Policy and Promotion has published Draft Patent (Amendment) Rules, 2019 (the “draft Rules”) on May 31, 2019.
The amendment in the said rules has mainly been proposed in respect of provisions related to submission of priority document and its English translation and submission of Annual working report. The proposed rules aim to provide a better implementation of the existing rules and extend to provide clarity with respect to the related timelines .
The important features of the Draft Rules are discussed herein below:
1. Non-extendable deadlines for Submission of certified copy of priority document and its English translation.
The Draft Rules put forward stringent timelines to be followed for submission of the priority document and its duly verified English translation.
-The time limit for filing the certified copy of the priority document is 31 months from the priority date, if the same has not been filed with International Bureau (in compliance of paragraph (a) or paragraph (b) of rule 17.1 of the regulations under the Treaty) as mentioned under rule 20(4) of the Indian Patent Rules, 2003.
-For applications, where the priority document is not in English, the deadline for filing the verified English translation is three months from the invitation of the Examiner.
There are no extensions provided for filing the above-mentioned documents and non-compliance of the timelines shall lead to disregard of the priority.
2. Submission of Annual working statement
In respect of annual working statements, the rules provide a clarity on the timelines to be followed. The rules elucidate that the annual working statement 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.
This amendment removes the ambiguity that existed in the present provision with respect to submission of the First Annual Working Report in newly granted patents. In such cases, the first annual working statement will now be required to be submitted by the patentee or the licensee or his authorized agent starting from the calendar year commencing immediately after the calendar year in which the patent was granted, and shall be furnished by March 31st of the next calendar year.
3. Updated Form-27 (Annual Working Report) introduced
- working details for a granted product and/or process
An updated Form-27 is proposed to be introduced by way of these rules to enable the patentees to provide more meaningful information related to working of their granted product or process.
The proposed Form 27 now delineates a separate column for submission of information related to process patents which was missing in the earlier Form. The form now requires the value of the patented product and/or product obtained by patented process manufactured in India and imported intoIndia. The information related to quantum of product is no more required.
If the patent is worked, the following details are to be provided:
i) For Product
(a) where the subject matter of the patent is a product, approximate value accrued in India to the patentee(s)/ licensee furnishing the statement from that product through:
(a1) Manufacturing in India……………………….. (in INR)
(a2) Importing into India……………………………. (in INR)
ii) For Process
(b) where the subject matter of the patent is a process, approximate value accrued in India to the patentee(s)/ licensee furnishing the statement from the product(s) obtained directly by that process through:
(b1) Manufacturing in India……………………….. (in INR)
(b2) Importing into India……………………………. (in INR)
The Rules also clarify that in instances, where it is difficult to derive the value of the patent separately from the value accrued from related patents, such that all the related patents are granted to the same patentee(s), then the details of all such patents, including the patent numbers, shall be provided along with value accrued from all such patents.
Who should file the AWR
The proposed Form-27 reaffirms that every patentee and every licensee (exclusive or otherwise) has to file this Form separately, in line with the existing provisions of the Indian Patent Act, 1970 read with rule 131(1) of the Patent Rules, 2003. In cases where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, each licensee is required to file this Form individually.
Presently the rules are introduced as Draft Rules and the Ministry has invited comments from public until June 30, 2019. After receiving the comments from the public, the Ministry may amend these Rules and notify the final version thereafter.